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PUBI^ICATIONS  OF 

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Foreign  Patent  and  Trademark  Laws. 

A  Comparative  Study. 

By  ARTHUR  P.  GREELEY. 

8vo.     319  pp.     Express  paid,   $5.00. 


United  States  Supreme  Court  Practice  and  Procedure, 

^A/ith  the  Rules  and   Forms. 

By  HEBER  J.  MAY. 
8vo.    1000  pp.    $6.50,  Express  paid. 

An  Index  Digest  to  the  Decisions  of  the  United 
States  Supreme  Court, 

In  Patent  Causes  from   1800  to   1897. 

By   WOODBURY   LOWERY. 

Svo.    $5.00,  Express  paid. 


Annual  Digest  to  the  Decisions 

Of  the  Supreme  Court  of  the  United  States,  the  Federal  Courts  and  of 

the  Commissioner  of  Patents  in  matters  relating  to  Patents, 

Trademarks,  Designs,  Labels  and  Copyrights  for  1898. 

By  LOUIS  M.  SANDERS. 

Svo.    $2.50,  Express  paid. 

■WASHING-TON,   D.  C. 


ANNUAL 

DIGEST  OF  THE  DECISIONS 


OF   THE 


SUPREME  COURT  OF  THE  UNITED  STATES 
THE  FEDERAL  COURTS 


THE  COMMISSIONEE  OF  PATENTS 

(INCLUDING   MANUSCRIPT  DECISIONS) 

IN    MATTERS 

RELATING  TO  PATENTS,  TRADEMARKS,  DESIGNS 
LABELS  AND  COPYRIGHTS 


KOR   1899 


L 


LOUIS  M.  gANDERS 

ASSISTANT  EXAMINER  U.  S.  PATENT  OFFICE 


WASHINGTON: 

JOHN  BYRNE  &  CO 
1900 


Copyrighted,  1900, 
JOHN  BYRNE  &  CO. 

m9 


PREFACE 


Several  new  features  have  been  added  to  the  ' '  Digest  for 
1899,"  which,  it  is  behevcd,  will  l)e  of  value  to  users  of  the 
book.  Among  these  ma}^  be  mentioned  the  following:  Such  of 
the  unpubhshed  or  MS.  decisions  of  the  Commissioner  and 
Assistant  Commissioner  of  Patents  as  are  accessible  to  the  public; 
lists  of  all  appealed  cases  and  their  disposition  on  such  appeal; 
lists  of  all  patents  adjudicated  upon  where  the  decision  has  been 
published,  etc.,  etc.  The  Court,  jurisdiction  and  date  of  deci- 
sion has  been  annexed  to  the  several  syllabi. 

It  will  be  noted  that  a  new  classification  has  been  adopted  for 
all  matter  pertaining  to  the  Application  during  its  pendency  as 
such.  Matters  pertaining  to  Interferences,  however,  have  been 
left  under  the  general  head  of  Interferences. 

The  *  precedes  all  Federal  Court  decisions.  The  f  precedes 
the  decisions  of  the  Secretary  of  the  Interior.  The  decisions  of 
the  Commissioner  and  Assistant  Conmiissioner  are  unmarked. 

L.  M.  S. 

Washington,  D.  C,  January^  1900. 

(V) 


755635 


JUSTICES 

OF  THE 

SUPREME  COURT  OF  THE  UNITED  STATES. 


Melville  Weston  Fuller.  Chief  Justice. 

John  Marshall  Harlan,    ] 
Horace  Gray, 
David  Josiah  Breaver, 
Henry  Billings  Brown,      ,    . 

GEORGE  ShIRAS,  Jr.,  \  ASSOCIATE  JUSTICES. 

Edward  Douglass  White, 
KuFus  W.  Peckham, 
Joseph  McKenna,  j 


JUDGES  OF  THE  UNITED  STATES  CIRCUIT  COURTS  OP 
APPEALS,  AND  THE  CIRCUIT  AND  DISTRICT  COURTS. 

1st    CIRCUIT. 

Horace  Gray,  Circuit  Justice. 

Le  Baron  C.  Colt,      )  Circuit  Judges. 

William  L.  Putnam,  J 

Nathan  Webb,  Me.,      1 

Edgar  Aldrich,        N.  H.,  I 

-ay        ^     t^  T^^r^^T    T\r  o,      ^  District  Judges. 

Francis  C.  Lowell,  Mass., 

Arthur  L.  Brown,  R.  I.,    j 

2d  circuit. 

RuFUS  W.  Peckham,  Cihcuit  Justice. 
William  J.  Wallace,  ^ 
E.  Henry  Lacombe,      i  Cihcuit  Judges. 
Nathaniel  Shipman,  j 
William  K.  Townsend,  Conn.,  1 

Alfred  C.  CoxE,  N.  D.  N.  Y.,  j 

Addison  Brown,  S.  D.  N.  Y.,    }■  District  Judges. 

Edward  B.  Thomas,      "  E.  D.  N.  Y.,    | 
HoYT  H.  Wheeler,  Vt.,  J 

(vii) 


District  Judges. 


viu  judges  of  the  federal  courts. 

3d  circuit. 

Gj:orge  Shiras,  Jr.,  Circuit  Justice. 

Marcus  W.  Acheson,  \ 

George  M.  Dallas,      Y  Circuit  Judges. 

George  Gray,*  J 

Edward  G.  Bradford,  Del.,  ~1 

Andreav  Kirkpatrick,  K.  J.,  I 

William  Butler,'  E.  D.  Fa.,    [  District  Judges. 

Joii:n  B.  McPiierson,^     E.  D.  Pa.,    | 

Joseph  Buffington,      W.  D.  Pa.,  J 

*  Additional  Judgeship  created  Jan.  25, 1899. 

1  Retired  Jan.  31, 1899.  =  Commissioned  Mar.  2, 1899. 

4th  circuit. 

Melville  W.  Fuller,  Circuit  Justice. 

Nathan  Goff,  >  „  -r .  ^^^ 

„  TT  ij         ^  >  Circuit  Judges. 

Charles  H.  biMONTON,  / 

Thomas  J.  Morris,         Md., 

Thomas  E.  Furnell,     E.  D.  N.  Car., 

Hamilton  G.  Ewart,'  W.  D.  N.  Car. 

William  R.  Brawley,  E.  &  W.  D.  S.  Car, 

Edmund  Waddill,  Jr. ,E.  D.  Va., 

John  Paul,  W.  D.  Ya., 

John  J.  Jackson,  W.  Ya., 

'  Commissioned  Apr.  13,  1899. 

5th  circuit. 

Edward  D.  White,  Circuit  Justice. 

Don  A.  Pardee,      ^ 

A.  P.  McCoRMiCK,    i  Circuit  Judges. 

David  D.  Shelby,*  J 

John  Bruce,  N.  D.  Ala.,  1 

Harry  T.  Toulmin,     S.  D.  Ala.,    I 

Charles  SwAYNE ,        N.D.  Fla., 

James  W.  Locke,  S.  D.  Ela.,     | 

William  T.  Newman,  N.  D.  Ga.,    j 

Emory  Speer,  S.  D.  Ga.,        district  Judges. 

Charles  Parlange,    E.  D.  La.,     , 

Aleck  Boarman,          W.  D.  La.,    | 

Henry  C.  Niles,  S.  D.  Miss., 

David  D.  Bryant,        E.  D.  Tex., 

Edward  Ft.  Meek,        N.  D.  Tex.,  | 

Thomas  S._Maxey,'X^W.  D.  Tex.,  J 

*  Additional  Judgeship  created  Jan.  25, 1899. 


JUDGES    OF    THE    FEDERAL    COURTS. 


6th  circuit. 


John  M.  IIaklan,  Circuit  Justice. 

William  11.  Taft,     ^ 

Horace  11.  Lurtox,  I  Circuit  Judges. 

AViLLiAM  R.  Day,*     J 

JoHK  Watson  Baur,^     Ky.,  "| 

Walter  Evaks,^  Ky., 

Henry  11.  Swan.  E.  D.  Micli., 

Henry  F.  Severens,    AV.  D.  Mich.,  | 

Augustus  J.  Kicks,       N.  D.  Ohio,  }  District  Judges. 

George  R.  Sage,''  S.  D.  Ohio,  I 

Albert  C.  Thompson,*  S.  D.  Ohio, 

Charles  D.  Clark,       E.  &  M.  D.  Tenn.,  | 

Eli  S.  Ha^imond,  W.  D.  Tenn.,  J 

*  Additional  Judgeship  created  Jan.  25, 1899. 
'  Retired  Feb.  21, 1899.  "  Commissioned  Mar.  3, 1899. 

^  Resigned.  •*  Comrais.sioued  Sept.  23, 1899. 

Ttii  circuit. 

Henry  B.  Broavn,  Circuit  Justice. 
William  A.  Woods,      1 
James  G.  Jenkins,  !  ,, 

JohnW.Showaltek,-  [  <^iRCUiT  .Judges. 

Peter  S.  Grosscup,^     j 

Peter  S.  Grosscup,*  X.  D.  Ills.,    ] 

Christian  C.  Kohlsaat,*  N.  D.  Ills.,     I 

William  J.  Allen,  S.  D.  Ills.,      !  , 

John  H.  Baker,  Ind.,  District  Judges. 

AViLLiAM  H.  Seaman,         E.  1).  Wis.,    | 
Bomanzo  Bunn,  W.  D.  Wis.,  J 

>  Deceased  Dec.  10,  1898.  =  Commissioned  Jan.  23,  1899. 

^  Resigned  to  take  efl'ect  upon  bis  qualifying  as  Circuit  Judge. 
*  Commissioned  Feb.  28, 1899. 


8th  circuit. 

David  J.  Brewer,  Circuit  Justice. 

Henry  C.  Caldwell, -j 

Walter  H.  Sanborn,  i  Circuit  Judges. 

Amos  M.  Thayer,        J 

John  A.  Williams,    E.  D.  Ark.,   1 

John  H.  Rogers,         W.  D.  Ark.,  I 

Moses  Hallett,         Colo.,  {' District  Judges. 

Oliver  P.  Shiras,      N.  D.  la., 

John  S.  Woolson,     '  S.  D.  la.. 


JUDGES  OF  THE  FEDERAL  COUETS. 


Cassitjs  G.  Foster,!    Kan., 
William  C.  Hook,''     Kan., 
William  Lochren,    Minn., 
Elmer  B.  Adams,       E.  D.  Mo., 
John  F.  Philips,        W.  D.  Mo., 
W.  H.  MuxGER,  :Neb., 

Charles  F.  Amidon,  N.  Dak., 
John  E.  Carland,      S.  Dak., 
John  A.  Marshall,  Utah, 
John  A.  Riner,  Wy., 

'  Resigned  Feb.  28,  1899. 


[  District  Judges. 


=  Commissioned  Feb.  13, 1899. 


9th  circuit. 


Joseph  McKenna,  Circuit  Justice. 

William  W.  Morrow, 

William  B.  Gilbert, 

Erskine  M.  Boss, 

John  J.  De  Haven, 

Olin  Wellborn, 

Hiram  Knowles, 

Cornelius  H.  Hanford,  Wash., 

Thomas  P.  Hawley,         Nev., 

Charles  B.  Bellinger,  Ore., 

James  H.  Beatty,  Id., 

Charles  S.  Johnson,        Alaska, 


Circuit  Judges. 


X.  D.  Cal. 
S.  D.  Cal., 
Mont., 


►  District  Judges. 


COURT  OF  APPEALS  OF  THE   DISTRICT  OF  COLUMBIA. 

Richard  H.  Alvey,  Chief  Justice. 

Martin  F.  Morris,  j  Associate  Justices. 
Seth  Shepard,  } 


JUDGES   OF   THE   FEDERAL   COURTS. 

UNITED  STATES  PATENT  OFFICE. 

Hon.  Charles  Holland  Duell, 

Commissioner  of  Patents. 

Hon.  Arthur  Philip  Greeley, 

Assistant  Commissioner  of  Patents. 


TABLE  OF  CONTENTS. 


PAGE 

ABANDONMENT  OF  INVENTION.    (See  Applications, 

Abandokkd.) 1 

I.  In  General 1 

II.  By  Failure  to  Claim 3 

AMENDMENT  TO  PATENT  LAW  IN  KEGABD  TO  IN- 
SANE PERSONS 4 

ANTICIPATION 5 

I.  Patents  and  Printed  Publications 5 

II.  Prior  Art 9 

III.  Prior  Use 12 

TV.  Public  Use  or  Sale 13 

APPEAL.    (See  Interferences,  Appeal.) 15 

I.  From  Primary  Examiner  to  Commissioner  ...  15 

II.  To  the  Board  of  Examiners-in-Cuief     15 

III.  From  the  Commissioner  to  the  Court  of  Ap- 

peals, D.  C 17 

IV.  Return  of  Appeal  Fees 18 

V.  To  the  Circuit  Court  of  Appeals 18 

APPLICATIONS 19 

I.  Abandoned 21 

(a)  In  General 21 

(b)  Bevivalof 26 

II.  Affidavits.     To  Obtain  Interferences 28 

III.  Amendments 28 

(a)  In  General 28 

(&)  Election  and  Division 29 

(c)  After  Final  Rejection     .           29 

(d)  New  Matter 30 

(e)  After  Allowance  under  Bide  7S 31 

IV.  Attorneys 31 

(a)  Powers  of 31 

(6)   Use  of  Assignment  Records 33 

(c)   Disbarred 33 

V.  Claims 33 

(a)  Duplicate  or  Redundant 33 

(6)  Functional  or  Indefinite 34 

(c)    Two  Inventions  in  One  Claim 35 

(cZ)  Order  in  Relation  to  Punctwition 35 

(xiii) 


XIV  CONTENTS. 

PAGE 

VI.  Complete.     Order  in  Eelation  to 36 

VII.  Division  of 36 

(a)  Classification  in  the  Patent  Office 36 

(b)  Practice 38 

(c)  Process  and  Ajjparatus- 39 

(d)  Process  and  Product 40 

(e)  Different  Processes ....  40 

(/)  Status  of  Invention  in  the  Arts 41 

VIII.  Drawings 41 

(a)  In  General 41 

(&)   Order  in  Pelation  to 43 

IX.  Examination  of     44 

(a)  Information  and  Advice  to  Applicants 44 

(6)  Rejection      46 

(c)  Actions  Other  than  Bejection 47 

X.  Fees.     Order 48 

XI.  Forfeited.    Penewal  of 48 

XII.  Model 49 

XIII.  Name  of  Applicant.    Order 49 

XIV.  Oath 49 

(a)  New  or  Reneiced 49 

{!))    Supplemental 50 

(c)    In  Foreign  Countries.     Order 50 

XV.  Pending.    Access  to 51 

XVI.  Petition ;   .    .   .   .  51 

XVII.  Public  Use  Proceeding 51 

XVIII.  Reissue.    New  Hatter    -          ...                 .   .  52 

XIX.  Specification  •  " 53 

(a)  In  General 53 

[b)  Sufficienci/  of  Description 53 

XX.  Suspension  of  Action 54 

XXI.  By  Administrator  of  Deceased  Inventor  ...  55 

XXII.  Joint  and  Sole 56 

ASSIGNMENT 56 

I.  In  General 56 

II.  Of  Future  Improvements 57 

CASES  DISTINGUISHED 58 

COMITY       58 

CONTRACTS 61 

I.  Construction  of 61 

II.  Specific  Performance 61 

COPYRIGHTS 62 

I.  Copyrightable  Subject-Matter    .       62 

II.  False  Marking 62 


CONTENTS.  XV 

PAGE 

III.  IXFRINGEMENT (i3 

(a)  In  General "3 

(b)  Injunction 05 

IV.  Penalties 66 

V.    PUBLICATIOX  AND  SALE (j7 

DAMAGES  AND  PROFITS 08 

I.  Estimation  and  Measuke  of 68 

II.  oSTOMIXAL 71 

DECISIONS  OF  THE  COMMISSIONER  OF  PATENTS     .    .  71 

I.  Affirmed  ox  Appeal  to  Court  of  Appeals,  D.  C.  71 

II.  Eeveksed  on  Appeal  to  Court  of  Appeals,  D.  C.    72 

III.  Affirmed  in  Part  and  Reversed  in  Part    ...  72 

DECISIONS  OF  THE  FEDERAL  COURTS 72 

I.  Affirmed  on  Appeal 72 

I  r.  Reversed  on  Appeal 83 

III.  Appeals  Dismissed .  91 

IV.  Disposition  of  Motions  for  Rehearing 98 

DECISIONS  OF  FOREIGN  COURTS        93 

DEFENSES 94 

I.  In  General 94 

II.  Burden  of  Proof 94 

DESIGNS • 95 

I.  Appeal  and  Petition     95 

II.  Construction  of  Statutes ...  96 

III.  Infringement 97 

IV.  Limited  to  a  Single  Invention 97 

V.  Interfekence 98 

VI.  Practice  in  tup:  Patent  Office 98 

VII.  Test  of  Identiiv ...  99 

DISCLAIMER 99 

I.  Construction  of 99 

II.  Delay  in  Filing 100 

III.  Under  the  Statute,  4917  R.  S 100 

EQUITY 101 

I.  Bill 101 

(a)  In  General 101 

(b)  Mnltifariou.sness 101 

II.  Demurrer 103 

III.  Plea 103 

IV.  Ansaver 103 

V.  Jurisdiction     103 

VI.  Master's  Report 104 

VII.  Res  adjudicata      103 

QUIVALENTS lOo 


XVI  CONTENTS. 

PAGE 

ESTOPPEL 107 

EVIDENCE 109 

I.  Admissibility 109 

II.  Suppression  on  Motiox 109 

III.  Weighing 110 

EOKEIGN  PATENTS  AND  PUBLICATIONS 110 

INFRINGEMENT Ill 

I.  In  General Ill 

II.  Claims  for  Combination 114 

III.  Contributory     114 

IV.  By  Cities  and  Corporations 115 

V.  Process 116 

VI.  Particular  Cases 116 

INJUNCTION 118 

I.  In  General 118 

II.  Dissolution 118 

III.  Preliminary 119 

{u)  In  General 119 

{h)    When  Grafted 120 

(c)    When  Denied 121 

IV.  Prior  Judgment     123 

V.  Public  Acquiescence     125 

VI.  Violation  of 125 

INTERFERENCES 126 

I.  In  General 128 

II.  Access  to  and  Production  of  Papers 129 

III.  Amending  Applications,  Rule  109     129 

IV.  Appeal 131 

(a)  In  General 131 

(h)  No  Appeal  Lies 132 

V.  Burden  of  Proof 133 

(a)  In  General 133 

{h)    When  one  Contestant  is  a.  Patentee 134 

VI.  Declaration  of 135 

(a)  In  General 135 

(b)  Application  and  Patent 136 

(c)  Claims  :  Subjects- Matter  must  Conflict 137 

(c7)  Suggesting  Claims 137 

(e)   Generic  and  Specific  Claims 138 

(/)  Claims:  Identical  in  Scope 139 

VII.  Dissolution 139 

(a)  In  General 139 

(6)  Pule  122 143 

(c)  Time  Allowable  for  Filing  Motions   ■   .              .   .  145 

(d)  Stntutonj  bars 145 

(e)  Transmittal  of  Motion  to  Primary  Exaininer   .   .  146 


CONTENTS.  XVU 

PAGE 

VIII.  Effect   of   Patent   Office  Decisions    in   the 

Courts 146 

IX.  Ex  parte  PROCKiiDiii OS 147 

X.  Issue 147 

XI.  Judgment  on  the  Kecord 149 

XII.  Motions  Generally     14!) 

XIII.  Practice  on  Final  Hearing  and  after  Judg- 
ment    150 

xiv.  preli3i1nary  statements 151 

(a)  In  General 151 

(6)   Amendment  of 152 

XV.  Priority 156 

(a)  In  General 156 

(&)  Abandoned  Experiments 160 

(c)   Eniploi/er  a)id  Employe 160 

{d)  Foreign  Patents 160 

(c)   Invention  Made  b)j  Third  Party 161 

XVI.  Reduction  to  Practice 162 

(a)  In  General 162 

(h)  Actwd 162 

(c)  Constructive 163 

(d)  Diligence 164 

(e)  Dratvings  and  Models 167 

XVII.  Reinstatement  and  Reopening  of 167 

XVIII.  Service  of  Notict: 167 

XIX.  Suspension  . 168 

XX.  Testimony 169 

(o)  In  General 169 

(b)  Timefor  Taking 170 

(c)  Interested  Parties 170 

(d)  Irrelevant 171 

XXI.  Vacating  Judgment 171 

INTERFERIXG  PATENTS       172 

I.  To  THE  SA3IB  Inventor 172 

II.  To  Different  Inventors 174 

JUDICIAL  NOTICE !    ....  174 

JURISDICTION 176 

I.  Commissioner  of  Patents 176 

II.  Secretary  OF  THE  Interior 17S 

III.  Federal  Courts 178 

(a)  Court  of  Appeals^  District  of  Columbia 178 

(&)   Circuit  Courts 180 

LABELS ISl 

LICENSE 182 

I.  In  General 182 


XVm  CONTENTS. 

PAGE 

II.  Implied ....  184 

III.  To  Make,  Use  and  Sell 185 

MAKKING  ARTICLES  PATENTED 186 

PATENTABILITY 186 

I.  In  General  .....       187 

II.  Combination 188 

III.  Invention  and  Skill  Distlnguished 189 

TV.  Invention  and  Suggestion  Distlnguished  ...  191 

Y.  Evidence  of  Extensive  Use 191 

VI.  Evidence  of  Result 192 

YII.  Utility 192 

VIII.  Novelty  and  Invention 193 

(a)  New  Use  or  Adaptation 193 

(6)  Process  or  Method 194 

(c)  Products      .       195 

(d)  Substitution  of  Materials 195 

IX.  Novelty  Without  Invention 196 

(a)  Aggregation    ...           196 

(b)  Arrangement 197 

(c)  Composition  of  Matter 198 

(d)  Double  or  Analogous  Use 198 

(e)  Process  or  Method 200 

(/J  Substitution  of  Materials 200 

((/)  Particular  Cases 201 

PATENTS 202 

I.  In  General 203 

II.  Presumption  of  Validity 203 

III.  Defective  or  Void 204 

IV.  Construction  of 205 

(a)  In  General 205 

(b)  Liberal  or  Broad     208 

(c)  Bij  T>rai.cings 211 

(d)  By  Specification 211 

(e)  By  State  of  the  Art 212 

V.  Claims 213 

(a)  Ambiguous,  How  Construed 213 

(b)  For  Combination 213 

(c)  For  Specific  Element  (f  Combination 213 

(d)  Limited  by  Amendment  in  Patent  Ofjlce 214 

(g)   Limited  by  their  Terms 215 

(0  "  Substantially  as  Described,''''  etc 216 

VI.  Correction  of 217 

(a)  By  Certificate  of  Correction 217 

(6)  By  lidssue 218 

VII.  Limitation  of,  b\^  Foreign  Patents 219 


CONTENTS.  XIX 

PAGE 

VIII.  Reissue 220 

IX.  Valid  and  Infringed 220 

X.  Valid  but  Not  Infringed 233 

XI.  Validity  Xot  Determined,  Not  Infringed     .  .  237 

XII.  Void  in  Whole  or  in  Part 242 

PRACTICE  IN  THE  UNITED  STATES  COURTS 2ol 

PRINTS 252 

PRINTS  AND  LABELS 2o:j 

PRIOR  ADJUDICATION 253 

PROTECTION  OF  PATENTS  IN  TERRITORY  SUBJECT 
TO  MILITARY  GOVERNMENT  BY  UNITED  STATES 

FORCES 255 

REOPENING  CASES  IN  THE  PATENT  OFFICE 25S 

I.  Ex  Parte 2oS 

II.  Interferences 259 

REPAIR  OF  PATENTED  MACHINES 260 

RULES  OF  PRACTICE 200 

REVENUE  STAMPS 203 

STATUTES,  CONSTRUCTION  OF 205 

SUITS 206 

I.  Attorneys 200 

II.  Costs 200 

III.  Laches 207 

IV.  Parties 20s 

V.  Title 271 

TESTIMONY  OF  EXPERTS 271 

TRADE  MARKS  AND  TRADE  NAMES 272 

I.  In  General 273 

II.  Abandonment 275 

III.  Alternatives     270 

IV.  Anticipation 270 

V.  Arbitrary  . 270 

VI.  Arbitrary"  Descriptive 277 

VII.  Assignment 278 

VIII.  Descriptive 278 

IX.  Essential  Features .       .  279 

X.  Foreign  Words 280 

XI.  Generic  Terms 281 

XII.  Geographical  Names 282 

(a)  Indicathvi  Locality 282 

(6)   Used  Arhitrariljj  or  Fancifidhj 283 


XX  CONTENTS. 

PAGE 

XIII.  Infringement 284 

(fO  In  General 284 

(h)  Particular  Cases 284 

Xiy.  Injunction 285 

XV.  Interference 28G 

XVI.   -lURISDICTION  OF  COURTS  •              287 

XVII.  Practice  IN  the  Patent  Office 288 

XVIII.  Registration 289 

XIX.  Eight  to  Use  Name  of  Patented  Article     .  .   -  290 

XX.  Eight  to  Use  Personal  Name 291 

XXI.  Statute  Construed 292 

XXII.  Unfair  Competition 294 

XXIII.  Use  and  Sale  as  Establishing  Title 301 

XXIV.  What  Does  Not  Constitute 301 


ANNUAL 
DIGEST  OF  DECISIONS 


IN 


PATENT,  TRADEMARK,  DESIGN,  LAREL, 
AND  COPYRKiHT  CASES. 


Abandonment  of  Invention.     (See  Applications,  Abanijoned.) 
I.   In  General. 
II.   By  Failure  to  Claim. 

I.   In  General. 

1,  The  failure  of  an  inventor  to  show  that  he  made  his  in- 
vention at  a  elate  prior  to  the  fihng  of  the  application  for  a 
patent,  Avhich  is  cited  as  anticipating  the  claims  of  his  applica- 
tion, and  the  acceptance  of  a  patent  with  claims  so  narrowed  as 
to  exclude  the  anticipated  matter,  is  an  abandonment  of  such, 
matter  to  the  public;  and  the  inventor  will  not  be  allowed,  in  a 
suit  upon  the  patent  so  narrowed,  to  claim  a  construction  which 
would  cover  the  matter  thus  abandoned.  (C.  C,  D.  N.  J. 
May  25,  1899.) 

Gray,  J.]     ^Maier  et  al.  v.  Bloom  et  al,  95  Fed.  Rep.  159. 

2.  Where  after  a  reduction  to  practice  of  an  invention  an  ap- 
plicant delayed  for  eleven  years  in  filing  an  application  because 
of  the  fixed  and  determined  purpose  on  the  jiart  of  the  owner 
of  the  invention  to  keep  it  from  the  public  and  to  prevent  his 
partners  from  obtaining  any  benefit  Avhatever  therefrom  until 
the  expiration  of  certain  patents  and  he  could  find  it  profitable 
to  dispose  of  certain  machines  that  he  had  on  hand,  and  in  the 
meantime  third  parties  had  applied  for  and  obtained  a  patent 


Z  ABANDONMENT   OF   INVENTION. 

for  the  same  invention.  Held  that  there  was  no  excuse  or  justifi- 
cation whatever  for  the  want  of  diligence  in  making  the  appU- 
cation.      (C.  A.  D,  C.     June  6,  1899.) 
Alvey,  J.]     *  Mower  v.  Duel],  Com'r  of  Patents,  88  0.  G.  191. 

3.  Under  such  circumstances,  to  say  the  least  of  the  matter, 
there  was  not  much  consideration  given  to  the  public  in  this 
scheme  of  delay,  however  much  it  may  have  inured  to  the 
benefit  and  advantage  of  the  owner  of  the  invention.         */f/. 

4.  Where  an  applicant  reduced  an  invention  to  practice  and 
delayed  for  about  eleven  years  in  filing  an  application,  and 
during  this  delay  subsequent  and  independent  inventors  of  the 
same  device  came  into  the  Office  with  their  completed  invention 
and  applied  for  and  obtained  a  patent  at  much  cost  and  trouble, 
and  put  the  invention  into  operation  and  gave  the  public  the 
benefit  of  it,  Held  that  to  grant  a  patent  to  the  first  to  reduce 
the  invention  to  practice  and  thereby  defeat  the  patent  of  three 
years'  standing  would  neither  be  equitable  nor  just,  nor  would 
it  be  promotive  of  the  great  object  of  the  patent  laws.  (Bates 
V.  Coe,  98  U.  S.  31,  cited.)  ^Id. 

5.  The  patent  laws  are  founded  in  a  large  public  policy  to 
promote  the  progress  of  science  and  the  useful  arts.  The  pub- 
lic, therefore,  is  a  most  material  party  to  and  should  be  duly 
considered  in  the  application  for  a  patent  securing  to  the  indi- 
vidual a  monopoly  for  a  limited  time  in  consideration  of  the 
exercise  of  his  genius  and  skill.  */(Z. 

6.  The  arts  and  sciences  will  not  be  promoted  by  giving  en- 
couragement to  inventors  to  withhold  and  conceal  their  inven- 
tions for  an  indefinite  time  or  to  a  time  when  they  may  use  and 
apply  their  inventions  to  their  own  exclusive  advantage  irre- 
spective of  the  public  benefit,  and  certainly  not  if  the  inventor 
is  allowed  to  conceal  his  invention  to  be  brought  forward  in 
some  after  time  to  thwart  and  defeat  a  more  diligent  and  active 
inventor  who  has  placed  the  benefit  of  his  invention  within  the 
reach  and  knowledge  of  the  public.  */c/. 

7.  In  withholding  the  invention  after  its  completion,  when  a 
patent  could  be  obtained  therefor,  for  an  undue  and  unreason- 
able time  until  after  other  inventors  have  by  their  skill  and 
ingenuity  perfected  a  similar  invention  and  obtained  a  patent 
therefor,  the  first  or  original  inventor  shows  himself  to  be  un- 


ABANDONMENT    OF    INVENTION.  6 

mindful  of  both  the  piiUlic  niul  iii(li\i(lual  rights,  inul  one  of 
the  reasons  why  the  statute  lias  ct)nliclecl  such  large  [K)\vers  to 
the  Commissioner  of  Patents  in  refusing  a  i)atent  is  to  prevent 
such  abuse.  -■•/(/. 

8.  Under  section  4893,  Revised  Statutes,  an  invention  claimed 
must  not  only  be  shown  to  be  new  and  useful,  but  it  must  also 
be  made  to  appear  that  a  claimant  is  justly  entitled  to  a  patent 
therefor.  A  claimant  cannot  l)e  justly  entitled  if  a  patent  when 
granted  would  or  could  oi)erate  a  wrong  either  to  the  public  or 
a  rival  inventor  and  that  wrong  be  the  result  of  the  claimant's 
own  laches  or  negligent  delay  in  asserting  liis  rights.         */(/. 

9.  Where  it  was  urged  that  under  section  4886,  Revised 
Statutes,  there  can  be  no  abandonment  of  a  right  to  a  patent 
unless  such  abandonment  be  afhrmatively  proved.  Held  that 
affirmative  facts  may  be  proved  by  negative  evidence,  and 
Avhere  the  acts  and  conduct  of  a  party  are  of  such  nature  as  to 
give  rise  to  a  rational  presumption  of  a  fact,  that  presumption, 
after  the  rights  of  other  parties  have  intervened  and  attached, 
cannot  be  removed  or  gotten  rid  of  by  simply  denying  the  in- 
tention to  produce  the  result.  -•'/(/. 

10.  Parties  must  be  bound  by  the  consequence  of  their  own 
acts,  and  this  principle  is  true  in  the  patent  law  as  it  is  in  all 
other  departments  of  the  law.  A  deliberate  intentional  delay 
and  non-action  in  a  matter  of  either  a  public  or  private  concern 
is  proof  of  a  very  cogent  nature,  and  tbe  party  chargeable  with 
such  conduct  must  bear  the  consequences  of  it,  and  will  not  be 
heard  to  excuse  himself  by  simply  declaring  that  he  did  not  in- 
tend to  prejudice  the  rights  of  others  or  to  waive  rights  of  his 
own  that  would  have  been  available  to  him  if  they  had  been 
timely  exercised.  */(/. 

II.  By  Failure  to  Claim.  (See  Tatexts,  Construction  of,  In 
General. 
1.  The  failure  of  an  applicant  to  claim  separately  the  steps  of 
the  process  additional  to  those  set  forth  in  other  claims  is  not  a 
confession  by  him  that  he  w'as  not  the  inventor  of  them;  such 
failure  goes  no  further  than  a  dedication  to  the  public  of  such 
steps  if  he  was  the  inventor  of  them.  (Oct.  9,  1899.) 
DuELL,  C]     Ex  parte  Fauche,  68  US.  Dec.  29. 


4  AMENDMEJsT    IN    REGARD   TO   INSANE    PERSONS. 

2.  A  description  of  a  device  or  C()nil»ination,  -which  is  not 
claimed  in  the  drawing  or  specification  of  a  patent,  estops  the 
patentee  from  securing  a  monopoly  of  its  use  by  a  siibsc(]iient 
patent  ns  well  as  by  any  other  means.  (C.  C.  A.,  8th  Cir. 
Oct.  9,  1899.) 

Sanborn,  J.]  *McBride  v.  Kingman  et  al.;  Same  v.  Sickels 
et  ah;  Same  r.  Randall  et  al;  Same  v.  Ains- 
worth  d  al,  97  Fed.  Rep.  217. 

Ameiiclment  to  Patent  Law  in  Regard  to  Insane  Persons. 

[Public— No.  91.] 
An  Act  to  amend  section  forty-eight  hundred  and  ninety-six  of  the  Revised 

Statutes. 

Be  it  enacted  by  the  Senate  and  House  of  Representatkes  of  the 
United  States  of  America  in  Congress  assendjJed,  That  section  forty- 
eight  hundred  and  ninety-six  of  the  Revised  Statutes  is  hereby 
amended  by  inserting  after  the  words  "in  his  life-time"  the 
following  words:  "and  when  any  person  having  made  any  new 
invention  or  discovery  for  which  a  patent  might  have  been 
granted  becomes  insane  before  a  patent  is  granted,  the  right  of 
applying  for  and  obtaining  the  patent  shall  devolve  upon  his 
legally  appointed  guardian,  conservator,  or  representative  in 
trust  for  his  estate,  in  as  full  manner  and  on  the  same  terms 
and  conditions  as  the  same  might  have  been  claimed  or  enjoyed 
by  him  while  sane;  "  and  by  inserting  at  the  end  of  said  section 
the  following  words:  "The  foregoing  section,  as  to  insane  per- 
sons, is  to  cover  all  applications  now  on  file  in  the  Patent  Office 
or  which  may  be  hereafter  made,"  so  that  the  said  section  as 
amended  will  read  as  follows: 

"Sec.  4896.  When  any  person,  having  made  any  new  inven- 
tion or  discovery  for  which  a  patent  might  have  been  granted, 
dies  before  a  patent  is  granted,  the  right  of  applying  for  and 
obtaining  the  patent  shall  devolve  on  his  executor  or  adminis- 
trator, in  trust  for  the  heirs  at  law  of  the  deceased,  in  case  he 
shall  have  died  intestate;  or  if  he  shall  have  left  a  will,  dispos- 
ing of  the  same,  then  in  trust  for  his  devisees  in  as  full  manner 
and  on  the  same  terms  and  conditions  as  the  same  might  have 
beeu  claimed  or  enjoyed  by  him  in  his  lifetime;  and  when  any 
person  having  made  any  new  invention  or  discovery  for  which  a 


ANTICirATIOX.  O 

patent  might  have  heeii  grnntt^'d  Iteconies  insane  before  a  patent 
is  granted,  the  right  of  applying  for  and  obtaining  the  patent 
shall  devolve  on  his  legally  appointed  guardian,  eonscrvator,  or 
representative  in  trust  for  his  estate,  in  as  full  manner  and  on 
the  same  terms  and  conditions  as  the  same  might  have  been 
claimed  or  enjoyed  by  him  while  sane;  and  when  the  applica- 
tion is  made  by  such  legal  representatives,  the  oath  or  aflirma- 
tion  required  to  lie  mad(>  shall  be  so  varied  in  form  that  it  can 
be  made  by  them. 

"The  foregoing  section,  as  to  insane  ])ersons,  is  to  cover  all 
applications  now  on  file  in  the  Patent  Ollice  or  which  ma}-  be 
hereafter  made." 

Approved,  February  28,  1899. 

Anticixiation. 

I.  Patents  and  Printed  Publications. 
11.  Prior  Art. 

III.  Prior  Use. 

IV.  Public  Use  or  Sale. 

I.  Patents  and  Printed  Publications. 

1.  ^^'here  a  patent  discloses  in  the  drawing  clearly  and  com- 
pletely everything  set  forth  in  the  claims  of  an  application, 
though  the  descriptive  part  of  the  specification  of  the  patent 
does  not  describe  or  refer  to  the  construction,  Held,  to  be  a 
proper  reference,  and  to  anticipate  the  claims  in  ([uestion. 
(Dec.  5,  1899.) 

Greeley,  A.  C]     Ex  parte  Scott,  68  MS.  Dec.  251. 

2.  A  party  is  entitled  to  a  patent  only  when  he  gives  to  the 
public  a  novel  invention,  and  that  invention  is  not  novel  if  it 
has  been  previously  disclosed  to  the  puljlic  by  another  in  such 
manner  that  one  skilled  in  the  art  can  make  and  use  it.  If  that 
disclosure  is  complete  and  puts  the  public  in  full  possession  of 
the  invention,  it  is  immaterial  how  it  was  made,  whether  by  the 
drawing  or  by  the  description.  The  question  in  each  case  is, 
whether  or  not  the  invention  is,  in  fact,  fully  disclosed  to  the 
public.  /(/. 

8.  A  material  consisting  of  the  comminuted  cellular  portion 
of  coni-})ith  freed  from  sappy,  deleterious,  and  adherent  matters 


6  ANTICIPATION. 

by  subjecting  tbe  jyith  to  tbe  action  of  a  blast  of  air,  preferably 
heated,  Held  to  be  not  anticipated  by  applicant's  prior  patent 
disclosing  corn-pith  obtained  by  passing  cornstalks  through 
breakers  and  then  separating  the  pith  from  the  fiber  and  outside 
shell,  as  there  is  no  description  in  the  patent  that  the  pith  is 
subjected  to  air  at  a  high  temperature.  (C.  A.  D.  C.  Feb.  8, 
1899.) 

Morris,  J.]     *Marsden  v.   Duell,  Com'r  of  Patents,  87  0.  G. 
1239. 

4.  When  it  is  sought  to  invalidate  a  United  States  patent 
under  Revised  Statutes,  sections  4885  and  4920,  by  an  alleged 
23rior  foreign  patent,  it  has  been  repeatedly  held  that  such 
alleged  foreign  patent  must  be  one  that  is  open  and  accessible  to 
the  public — one  that  is  a  public  and  not  a  secret  one.  (June 
23,  1899.) 

Duell,  C]     Roschach  v.  Walker,  88  0.  G.  1333. 

5.  It  does  not  appear  that  tbe  Bundy  device  was  ever  put  to 
practical  use;  and  fiom  the  time  of  Bundy  to  the  time  of 
Simonds,  dies  constructed  according  to  the  mechanical  laws 
covering  those  of  both  inventors,  so  far  as  shaping  various 
articles  is  concerned,  are  not  found  in  the  art.  Bundy  had 
been  buried  for  more  than  three-quarters  of  a  century  when 
Simonds  gave  to  the  world  his  patent,  which  admittedly  revo- 
lutionized the  art  of  the  production  l)y  power  of  articles  circular 
in  cross-sectional  area.  It  would  be  strange,  indeed,  if  a  patent 
like  that  of  Bundy,  buried  so  long  as  his,  and  originating  when 
forging  by  power  rolls  and  power  dies  was  unknown,  could  be 
held  to  anticipate  so  important  an  advance  on  tha  subject- 
matter  of  forging  by  power  as  the  invention  of  Simonds,  ex- 
pressed in  his  patent.  (C.  C,  D.  Me.  July  30,  1898.) 
Putnam,   J.]     *  Simonds  Rolling-Mach.  Co.    r.    Hathorn  Mfg. 

Co.  etal,  90  Fed.  Rep.  201. 
G.   A  patent  which  fails  to  show  tbe  one  feature  upon  which 
invention  rests  is  valueless  as  an  anticipation.      (C.  C. ,  S.  D. 
N.  Y.     Nov.  15,  1898.) 

CoxE,   J.]     '-i^Gormully  &  J.   Mfg,   Co.   r.    Stanley   Cycle  Mfg. 
Co.  etal,  90  Fed.  Rep.  279. 
7.   A  design  patent  Held,  anticipated  l)y  a  patent  for  the  article 


ANTICIPATION.  / 

of  niiinufacturc,  granted  more  than  two  years  prior  to  the  tiling 
date  of  the  application  for  the  design  i)atent,  both  i)atents  cov- 
ering the  same  snbjcct-matter  and  granted  to  the  same  inventor. 
(C.  C,  S.  D.  N.  Y.     Nov.  22,  1898.) 
Wheeler,  J.]     *Cary  Mfg.  Co.  r.  Neal  d  ai,  90  Fed.  Rc]).  720. 

8.  There  is  a  manifest  difference  between  the  necessities  of  a 
system  for  varying  the  illuminating  effects  of  incandescent 
lamps  in  a  room  and  the  needs  of  electric  mechanism  for  regu- 
lating the  current  to  bo  conveyed  to  electric  motors,  and  thus 
regulating  the  speed  of  a  car.  The  patent  for  the  one  with  its 
groups  of  electric  lights  told  nothing  to  the  inventor  who  was 
trying  to  protect  an  electric  car  motor  in  action  from  the  in  How 
of  a  current  dangerous  both  to  machinery  and  passengers. 
(C.  C.  A.,  2d  Cir.     Dec.  7,  1898.) 

Shipman,  J.]     *  Electric  Car  Co.  of  America  d  al.   v.   Nassau 
Electric  R.  Co.,  91  Fed.  Rep.  142. 

9.  Where  a  prior  patent  is  alleged  to  anticii)ate  the  patent  in 
suit,  the  description  in  the  prior  patent  must  be  tested  for 
sufficiency  by  the  knowledge  of  persons  skilled  in  the  art  as  it 
existed  at  the  date  of  the  prior  patent.  (C.  C,  N.  D.  Cal. 
Dec.  12,  1898.) 

MoRROAV,   J.]     *  Bowers  r.   San  Francisco  Bridge  Co.,  91  Fed. 
Rep.  381. 

10.  The  granting  of  a  patent  raises  a  jn-esumption  in  favor  of 
its  operativeness  and  utihty  (Dashiell  v.  Grosvenor,  162  U.  S. 
425,  16  Sup.  Ct.  805);  and  wlien  the  defects  therein  are  merely 
in  minor  details  of  construction,  such  defects  will  not  defeat  the 
efficiency  of  the  patent  as  an  anticipation,  provided  it  suffi- 
ciently discloses  the  principle  of  the  alleged  invention.  (Pick- 
ering r.  McCullough,  104  U.  S.  310;  Electric  Ry.  Co.  v. 
Jamaica  &  B.  R.  R.  Co.,  61  Fed.  Rep.  655.)  (C.  C,  D. 
Conn.     Jan.  24,  1899.) 

Tow^NSEND,  J.]     *  Patent  Button   Co.  v.  Scovill  Mfg.  Co.,    92 
Fed.  Rep.  151. 

11.  Where  it  was  contended  that  the  prior  art,  as  disclosed  in 
all  of  the  alleged  anticipatory  patents,  was  in  1882  so  suggestive 
as  to  make  the  car-coupler  of  the  patent  in  suit  ol)vious  to  an 
intelligent  and  skilled  mechanic;  and  with  a  view  of  demon- 


8  ANTICIPATION. 

stratiiig  this  obviousness  the  defendant,  in  1896,  submitted  the 
Janney  construction,  under  the  1879  patent,  to  three  skilled 
mechanics,  and,  without  further  instructions,  asked  them  to 
substitute  a  vertical  lock  in  lieu  of  the  side  or  laterally  working 
lock  of  the  patent  of  1879,  which  they  did,  and  their  results 
fairly  show  the  device  of  the  patent  in  suit.  Held,  that  the 
action  of  these  mechanics  is  not  a  fair  test  of  obviousness  for 
two  reasons:  First,  they  did  their  work  in  1896  instead  of  1882, 
the  date  of  the  patent,  and  it  does  not  follow  that  if  a  mechanic 
in  1896,  with  all  the  light  of  advanced  knowledge  in  the  art, 
could  ajjply  the  mechanical  knowledge  as  it  existed  in  1882  to 
a  new  result,  such  mechanic  could  have  done  so  if  he  had  made 
the  effort  in  ]889.  Second,  the  question  sul)mitted  to  the 
mechanics  practically  stated  the  object  to  be  accomplished.  A 
jDart  of  the  invention  was  to  apprehend  that  there  could  be  an 
effectively  working  vertical  pin,  and  this  part  of  the  invention 
was  imparted  to  the  mechanics.  (C.  C. ,  E.  D.  Mo.;  E.  D. 
Feb.  14,  1899.) 

Adams,  J.]     ^McConway  &  Torley  Co.  v.  Shickle,  Harrison  & 
Howard  Iron  Co.,  92  Fed.  Rep.  162. 

12.  Unless  the  prior  publication  describes  the  invention  in 
such  a  full,  clear  and  intelligible  manner  as  to  enable  persons 
skilled  in  tJie  art  to  comprehend  it  and  reproduce  the  processor 
article  claimed,  without  assistance  from  the  patent,  the  publica- 
tion is  insufficient  as  an  anticipation.  (Cases  cited.)  (C.  C. , 
S.  D.  N.  Y.     May  8,  1899.) 

CoxE,  J.]     ^^Badische  Analin  &  Soda  Fabrik  v.  Kahe  et  al,  94 
Fed.  Rep.  163. 

13.  A  description  which  is  insufficient  to  support  a  patent 
cannot  be  relied  on  as  an  anticipation.  In  each  instance  the 
same  precision  is  required.  */(/. 

14.  If  prior  patents  and  publications  can  be  reconstructed  by 
extrinsic  evidence  to  fit  the  exigencies  of  the  case,  the  inquiry 
will  no  longer  be  confined  to  what  the  publication  communicates 
to  tbe  public,  but  it  will  be  transferred  to  an  endeavor  to  ascer- 
tain what  the  author  intended  to  communicate.  The  question 
is.  What  does  the  prior  j^ublication  say?  not  what  it  might 
have  said  or  what  it  should  have  said.  The  court  has  simply 
to  consider  what  the  publication  has  contrilmted  to  the  art.     If 


ANTICIPATION.  V 

it  fails  to  show  tlio  invention  whicli  it  is  said  to  anticii)ate,  the 
contention  that  its  author  knew  enough  to  write  an  anticijiation 
is  grotesquely  irrelevant.  Were  such  a  rule  estahlished,  the 
law  upon  this  suhjeet  would  be  thrown  into  ini'xtriea]»li'  con- 
fusion. ''•f(L 

15.  The  criterion  ]»y  wliich  to  determine  whether  or  not  a 
foreign  i)atent  is  an  anticipation  of  a  patent  granted  in  the 
United  iStatcs  is  to  ascertain  whether  or  not  the  description  and 
drawings  of  the  foreign  patent  are  so  full,  clear  and  exact  as  to 
enable  any  person  skilled  in  ai't  to  which  they  relate  to  })ractice 
theinvention  of  the  U.  S.  patent,  and  if  so  found,  then  the  U.  S. 
patent  is  void  for  anticipation.  (C.  C,  E.  D.  Mo.  E.  D.  June 
26,  1899.) 

Adams,  -J.]     *  Springfield  Furnace  Co.  et  al.  v.  Miller  Down- 
Draft  Furnace  Co.  ctai,  96  Fed.  Rep.  418. 

16.  To  sustain  the  defense  of  anticipation,  it  is  necessary  that 
the  anticipatory  matter  should  clearly  show  the  invention  sub- 
sequently patented  in  such  manner  as  to  enable  any  person 
skilled  in  the  art  or  science  to  which  it  relates  to  make  or  con- 
struct and  practically  use  the  invention  for  the  purposes  con- 
templated in  the  subsequent  patent.  (C.  C.  A.,  3d  Cir.  Oct. 
4,  1899.) 

Bradford,  J.]     *McXeely  et  al.  v.  AMlliames  et  al. 

AVilliames  d  al.  r.  INIcNeely  et  ai,  96  Fed. 
Rep.  978. 
II.   Prior  Art. 

1.  An  inventor  is  entitled  to  be  protected  to  the  extent  of 
what  he  practically  accomplishes,  and  no  more;  and  in  this 
particular,  anticipatory  matter  which  has  never  gone  into  prac- 
tical use  is  to  be  narrowly  construed;  (citing  Ford  r.  Bancroft, 
85  Fed.  Rep.  457,  461.)  because,  otherwise,  the  effect  given  to 
an  invention  of  doubtful  utility  "  Avould  operate  rather  to  the 
discouragement  than  to  the  promotion  of  inventive  talent." 
(Citing  Deering  r.  Harvister  W'ks,  155  U.  S.  286,  295;  15  Sup. 
Ct.  118;  69  0.  G.  1641;  C.  D.  1894.)  (C.  C,  D.  Me.  July 
30,  1898.) 

Putnam,  J.]     *Simonds  Roller-Mach.  Co.  v.  Hathorn  ^ffg.  Co. 
daZ.,'90Fed.  Rep.  201. 


10  ANTICIPATION. 

2.  In  determining  wliether  what  a  patentee  has  done  involved 
real  invention,  the  court  is  bound  to  assume  that  the  patentee 
knew  everything  about  the  art  to  which  the  alleged  invention 
pertains  which  was  contained  in  printed  publications  or  in  the 
public  history  of  that  art,  and  upon  that  assumption  to  say 
"whether  the  step  taken  required  the  exercise  of  the  inventive 
faculty.      (C.  C,  S.  D.  Ohio,  W.  D.      Dec.  2,  1898.) 

Taft,  J.]     *Fry  v.  Rookwood  Pottery  Co.  ct  al,  90  Fed.  Rep. 
495. 

3.  An  impractical)le  prior  device,  not  capable  of  performing 
the  function  of  a  subsequent  patented  device  that  is  practicable 
and  useful,  is  no  anticipation.  (C.  C,  N.  D.  Cal.  Dec.  12, 
1898.) 

Morrow,  .T.]      *  Bowers  v.   San  Francisco  Bridge  Co. ,  91  Fed. 
Rep.  381. 

4.  It  is  not  sufficient  to  constitute  an  anticipation  that  a  prior 
device  might,  by  modification,  be  made  to  accomplish  the  func- 
tion performed  by  the  device  of  the  patent,  if  it  was  not  designed 
by  its  maker,  nor  adapted  nor  actually  used  for  the  perform- 
ance of  such  functions.  (C.  C,  E.  D.'wis.  July  5,  1898.) 
Seaman,  J.]     *  \\>stern  Electric  Co.  v.  American  Rheostat  Co. 

etal,  91  Fed.  Rep.  650. 

5.  A  claim  for  a  compound  bar  for  making  cutting-tools,  con- 
sisting of  an  inner  bar  of  harder  metal  and  an  inclosed  bar  of 
softer  metal  pressed  on  the  same,  etc.,  contains  nothing  that  is 
patentabl}^  new  in  view  of  a  patent  which  shows  a  bar  of  hard 
steel  surrounded  or  partly  surrounded  by  a  bar  of  softer  steel 
and  another  patent  which  shows  a  bar  for  cutting-blades  made 
by  i^artly  surrounding  the  hard  steel  by  iron.  (C.  A.  D.  C. 
Mar.  8,  1899. ) 

Alvey,  J.]     ^-i^ Bedford  et  al.  v.  Duell,  Com'r  of  Pats.,  87  0.  G. 
1611. 

6.  Where  a  protest  was  entered  in  the  German  Patent  Office 
to  the  grant  of  a  claim  for  a  method  for  making  steel  bars  for 
tools  by  combining  two  bars  of  different  grades  of  steel  so  that 
the  superior  steel  is  inserted  in  a  bar  of  inferior  steel,  on  the 
ground  that  the  method  was  already  known,  and  the  protest 
was  overruled,  Held,  that  the  action  of  the  German  Office  can 


ANTICII'ATION.  11 

have  no  influence  upon  the  dcterniination  of  the  ]n-esent  case, 
as  there  is  no  evidence  tliat  tlie  references  before  tlie  Patent 
Office  here  were  before  the  (icrnian  Office.  ^'-Id. 

7.  The  simiHtude  in  tlie  invention  relied  on  as  matter  of 
anticipation  with  the  invention  for  Avhich  a  ])atent  is  sought 
need  not  be  exact  in  form  or  structure;  but  if  the  information 
contained  therein  is  full  enough  and  sufficiently  precise  to  enable 
any  person  skilled  in  the  art  to  which  it  relates  to  perform  the 
process  or  make  the  thing  covered  by  the  claim  of  invention 
sought  to  be  patented,  it  will  be  sufficient  to  establish  the  fact  of 
anticipation  and  the  want  of  novelty  in  the  alleged  invention. 

8.  A  claim  for  a  traveling  carrier  of  a  hog-hoisting  machine 
the  essential  feature  of  which  is  chain-pendants  permanently 
attached  to  the  carrier.  Held,  to  be  anticipated  by  an  endless 
carrier  for  hoisting  building  material,  having  rod-pendants  per- 
manently attached  thereto,  the  uses  of  the  two  devices  being 
practical!}'  the  same,  as  by  substituting  the  chain  for  the  rod 
attached  to  the  carrier  of  the  reference  the  latter  would  be  avail- 
able for  drawing  hogs  from  the  pen  to  the  hoisting-point  in  the 
manner  described  by  appellant.  (C.  A.  D.  C.  Apr.  4,  1899.) 
Shepaed,  J.]   *  Lowry  v.  Duell,  Com'r  of  Patents,  88  0.  G.  717. 

9.  An  accidental  result  not  contemplated  by  a  prior  inventor 
cannot  anticipate  a  later  patent.  (C.  C. ,  D.  Mass.  A})!-.  7, 
1899.) 

Colt,  J.]    ^Tannage  Patent  Co.  r.  Donallan,  93  Fed.  Rep.  811. 

10.  A  patent  for  an  ordinary  street-ear  trolley  with  an  ordi- 
nary buffer  spring  so  constructed  as  to  come  into  operation 
when  the  trolley  has  assumed  a  vertical  i)osition,  and  ])y  engag- 
ing therewith  prevent  damage  being  done  to  the  trolley,,  or  by 
the  trolley  to  the  car  upon  which  it  is  placed.  Held,  antici- 
pated by  the  common  device  for  throwing  glass  target-balls 
wherein  a  buffer  spring  is  used  for  a  similar  purpose,  i.  e.,  to 
prevent  damage  to  the  projector  or  its  mechanism.  (C.  C, 
D.  N.  J.     July  7,  1S99.) 

KiRKPATKicK,  J.]     ^-^^ Thomson-Houston  Electric  Co.  v.  Rahway 

Electric  Light  &  Power  Co. ,  95  Fed. 
Rep.  660. 


12  ANTICIPATION. 

11.  It  is  iKit  sufficient  to  constitute  anticij^ation,  tiiat  the  de- 
vice relied  on  might,  by  modification,  be  made  to  accomplish 
the  functions  performed  by  the  invention  alleged  to  be  antici- 
pated, if  it  were  not  designed  by  its  maker,  nor  adapted,  nor 
actually  used  for  the  performance  of  such  functions;  neither 
will  mere  accidental  use  of  the  features  of  an  invention,  without 
recognition  of  its  benefits,  anticipate  a  patent.  (C.  C. ,  D.  N.  J.) 
KiRKPATRicK,  J.]     ^Ryan  v.  Newark  Spring  Mattress  Co.,  96 

Fed.  Rep.  100. 

12.  The  mere  secret  practice  of  a  process  or  the  physical  pres- 
ence of  a  product  or  manufacture  in  this  country  is  insufficient 
as  an  anticipation,  unless  and  until  the  public  acquires,  or  has 
an  opportunity  to  acquire,  therefrom  such  knowledge  as  would 
enable  one  skilled  in  tlio  art  to  practice  the  invention.  Such 
alleged  anticipation,  whether  by  foreign  printed  publication  or 
physical  presence  in  this  countiy,  must  so  embody  the  patented 
article,  that  a  specification  could  be  based  thereon.  (C.  C. , 
S.  D.  N.  Y.     July  29,  1899. ) 

TowNSEND,  J.]     *Acme  Flexible  Clasp  Co.  v.  Cary  Mfg.  Co., 
96  Fed.  Rep.  344. 

13.  By  knowledge  and  use,  the  legislature  meant  knowledge 
and  use  accessible  to  the  public.  The  knowledge  and  use  of  an 
invention  in  a  foreign  country  by  persons  residing  in  this  coun- 
try will  not  defeat  a  patent  wliich  has  here  been  granted  to  a 
bona  fide  patentee,  who,  at  the  time,  was  ignorant  of  the  exist- 
ence of  the  invention  or  its  use  abroad.  It  is  the  inventor  who 
is  the  first  to  confer  on  the  pul)lic  in  this  countr}^  the  benefit  of 
his  invention,  who  is  entitled  to  a  patent.  *7<i. 

III.  Prior  Use. 

1.  Experiments  producing  unsatisfactory  results,  and  aban- 
doned in  consequence,  cannot  be  held  to  establish  a  prior  use 
which  would  close  the  door  to  further  invention  by  which  a 
commercially  valuable  and  useful  product  can  be  placed  upon 
the  market.  (C.  C,  D.  N.  J.  July  14,  1899.) 
KiRKPATRicK,  J.]  *  Westinghouse  Electric  &  Mfg.  Co.  v. 
Beacon  Lamp  Co.  et  al,  95  Fed.  Rep. 
462. 


ANTICIPATION.  13 

2.  The  apiilieatioii  for  tlie  iiatcnt  in  suit  was  filed  on  Dec.  22, 
1883.  Articles  differing  in  degree  only  from  those  covered  by 
the  patent  were  imported  and  sold  in  ^lay,  1883,  seven  months 
prior  to  the  date  of  the  application,  but  subsequent  to  the  inven- 
tion and  commercial  introduction  of  the  articles  in  England. 
f/eW,  that  the  patentee  should  be  permitted  to  carry  the  date  of 
his  invention  back  to  what  was  done  by  him  in  England  prior 
to  his  arrival  in  this  country,  in  order  to  overcome  the  defense 
of  prior  use.  (C.  C,  S.  D.^N.  Y.  Aug.  4,  1899.) 
Town-send,  J.]     *Hanifen  ?'.  Price  ct  al,  96  Fed.  Rep.  435. 

3.  In  interference  cases  a  foreign  inventor  can  only  carry  back 
the  date  of  his  invention  in  a  foreign  country  by  a  patent  or  a 
publication,  or,  in  this  country,  by  the  date  of  the  arrival  in  this 
country  of  knoAvledge  of  said  invention.  ]>ut  there  is  a  distinc- 
tien  between  the  provisions  of  §  4923  R.  S.,  which  provides  for 
the  protection  of  the  patentee  against  proof  of  prior  knowledge 
or  use  of  his  invention,  without  publication,  in  a  foreign 
country,  and  the  general  grant  by  §  4886  R.  S.,  of  the  right  to 
a  patent  to  any  person  who  has  made  an  invention  not  known 
or  used  bv  others  in  this  country,  and  nowhere  patented  or 
described  in  any  printed  pu])lication.  The  natural  interpreta- 
tion of  the  language  of  §  488()  indicates  an  intention  to  confer 
the  benefit  of  the  patent  law  upon  any  individual  who  could 
show  a  prior  completed  inventive  conception,  regardless  of  the 
place  where  the  invention  was  conceived.  ^^Id. 

IV.   Public  Use  or  Sale. 

1.  The  fairly  constant  use  of  a  bicycle  rim  made  of  wood,  for 
a  period  of  four  or  five  years,  though  at  a  time  when  the  demand 
for  bicycles,  and  the  bicycle  art  as  well,  were  in  the  formative 
stage,  yet  in  a  locality  which  Avas  probabl}'  the  most  important 
manufacturing  center  for  bicycles  at  that  stage  of  the  art,  w'as 
manifestly  a  "public  use,"  within  the  meaning  of  the  patent 
law,  such  as  to  render  a  later  production  of  identical  means 
non-patentable,  without  regard  to  actual  knowledge  of  such 
prior  discovery  and  use.  (C.  C',  E.  D.  Wis.  Nov.  27,  1898.) 
Seaman,  J.]  *  Indiana  Novelty  ^Nlfg.  Co.  v.  Crocker  Chair  Co.; 
Same  r.  Smith  Mfg.  Co.,  90  Fed.  Rep.  488. 


14  ANTICIPATION. 

2.  It  is  the  fact  of  use  given  to  and  received  by  the  com- 
munity at  large,  in  contradistinction  to  shop  experiments,  or 
mere  occasional  exhibitions,  or  use  by  the  inventor  alone,  which 
must  control  ;  and  it  is  not  to  be  measured  by  degrees  or  terri- 
torial extent,  nor  made  dependent  upon  any  probability  of  fact 
that  knowledge  of  such  use  should  have  reached  the  later 
claimant.  */f/. 

3.  So  far  as  concerns  the  question  of  anticipation,  it  is  imma- 
terial whether  a  patentee  knew,  or  did  not  knew  of  the  antici- 
pating machine,  at  the  time  he  claims  to  have  invented  the 
machine  covered  by  his  patent.  The  court,  in  passing  upon 
his  device,  is  bound  to  assume  that  he  had  the  anticipating 
machine  before  him.  (C.  C,  8.  D.  Cal.  Jan.  30,  1899. 
Wellborn,  J].  *Lettcherv.  Mann  et  al,  91  Fed.  Rep.  909. 

4.  Where  a  machine  is  used  for  profit,  not  experiment,  and 
particularly  where  it  is  exposed  to  the  vieAV  of  persons  other 
than  the  inventor  and  his  employes  pledged  or  enjoined  to 
secrecy,  such  use  is  public  use,  and  in  order  to  invalidate  a 
patent,  such  use  must  be  established  by  proof  that  is  clear  and 
convincing.  (C.  C,  S.  D.  Cal.  Jan.  30,  1899.) 
Wellborn,  J.]   *Lettelierv.  Mann  et  al,  91  Fed.  Rep.  917. 

5.  Where  it  is  shown  that  the  patentee  and  his  partner  used 
in  their  business  a  number  of  machines  essentially  the  same  as 
the  one  patented  for  more  than  two  years  prior  to  the  applica- 
tion for  the  patent,  such  use  being  for  the  common  profit  of  the 
firm,  and  that  the  employes  of  the  firm  not  enjoined  to  secrecy, 
as  well  as  the  patentee's  partner,  saw  the  machines  in  operation, 
such  proof  will  invalidate  the  patent;  for  to  constitute  public 
use  it  is  not  necessaiy  that  more  than  one  person  should  have 
known  of  that  use.  */(i. 

6.  Improvements  in  a  machine  which  are  not  of  the  sub- 
stance of  the  patent  and  do  not  add  anything  patentable  to  the 
machine,  do  not  save  the  patent  from  the  invalidating  effect  of 
a  prior  public  use.  */(i. 

7.  "Whenever,"  under  R.  S.  §  4923,  "it  appears  that  a 
patentee,  at  the  time  of  his  application  for  a  patent,  believed 
himself  to  be  the  original  and  first  inventor  or  discoverer  of  the 
thing  patented,"  a  prior  use  in  a  foreign  country  will  not  defeat 


APPEAL.  15 

the  patent.     The  law  limits  the  inquiry  as  to  prior  use  to  this 
country.      (C.  C,  S.  D.  N.  Y.      May  8,"l899.) 
CoxE,  J.]     *Badische  Analin  &  Soda  Fabrik  v.  Kalle  el  ai,  94 
Fed.  Rep.  lG;-3. 

Appeal.     (See  Interfekexcks,  Appeal.) 

I.  From  Primary  Examiner  to  Commissioner. 
II.   To  the  Board  of  Examiners-in-Ciiief. 

III.  From  the  Commissioner  to  the  Court  of  Appeals, 

D.  C. 

IV.  Return  of  Appeal  Fees. 

V.  To  THE  Circuit  Court  of  Appeals. 

I.  From  Examiner  to  the  Commissioner. 

1.  Upon  the  requirement  of  an  Examiner  that  an  a]~iplicant 
present,  in  addition  to  his  own  affidavits,  affidavits  of  third 
parties,  Held,  that  the  question  raised  is  reviewable  by  petition 
to  the  Commissioner.     (Oct.  27,  1899.) 

Duell,  C]     Ex  parte  Johnson,  89  0.  G.  1341. 

2.  Held,  further,  that  such  requirement  is  unauthorized,  as 
Rule  75  does  not  provide  in  terms  for  corroborative  affidavits. 
If,  however,  the  Examiner  believes  that  an  applicant's  affidavit 
is  fraudulent  and  so  charges,  the  applicant  should  be  given 
leave  to  file  corroborative  affidavits.  {Ex  parte  Hurlbut,  52  0. 
G.  1062,  cited.)  Id. 

3.  From  an  Examiner's  requirement  that  the  original  model,  . 
structure  or  drawing,  referred  to  in  an  affidavit  filed  under  the 
provisions  of  Rule  75,  be  produced,  petition  may  be  taken  to 
the  Commissioner.  Id. 

II.  To  the  Board  of  Examiners-in-Chief. 

1.  The  failure  of  an  examiner  to  carry  into  effect  a  decision 
by  the  Commissioner,  is  a  proper  matter  to  be  brought  up  on 
petition;  but  the  application  of  the  rulings  of  a  decision  ren- 
dered in  one  case  to  the  facts  of  another  case  for  the  purpose  of 
determining  whether  or  not  the  claims  of  that  case  are  allow- 
able, requires  a  judicial  determination,  and  is  clearly  a  matter 
of  merits  which  should  be  reviewed  by  the  examiners-in-chief 
in  the  first  instance.  (Sept.  27,  1899.) 
Greeley,  A.  C]     Ex  parte  Ryley,  67  MS.  Dec.  495. 


16  APPEAL. 

2.  So  long  as  the  decision  was  not  rendered  in  the  case  under 
consideration,  it  is  immaterial  that  it  was  rendered  in  another 
case  filed  by  the  same  party,  since  it  could  give  no  more  force 
than  if  it  were  rendered  in  a  case  filed  by  some  other  party. 
Examiners  are  expected  to  follow^  the  decisions  of  the  Com- 
missioner although  rendered  in  other  cases,  but  where  the  action 
of  the  examiner  indicates  no  hesitation  to  give  full  force  and 
effect  to  a  decision  of  the  Commissioner,  but  holds  that  it  is  not 
applicable  to  the  case  in  hand,  a  question  of  merits  is  involved 
which  is  appeala])le  to  the  board  of  examiners-in-chief.       Id. 

3.  Division  was  required  )\y  the  examiner  and  acquiesed  in 
by  the  applicant,  who  filed  divisional  ajjplications,  one  of  which 
Avas  allowed.  The  examiner  rejected  a  claim  of  the  other  ap- 
plication in  view  of  certain  claims  in  the  allowed  application 
taken  in  connection  Avith  other  references.  Whereupon  petition 
was  taken  and  it  was  requested  that  the  examiner  be  instructed 
in  effect  to  allow  the  application.  Helcl^  that  the  question  pre- 
sented was  one  of  merits  which  should  not  be  j^assed  upon  by 
the  Commissioner  prior  to  an  adverse  decision  by  the  examiners- 
in-chief;  to  hold  otherwise  would  be  to  deprive  the  petitioners 
in  case  of  an  adverse  decision  on  the  question  of  patentability, 
of  the  right  of  appeal  to  the  Court  of  Appeals  of  the  District  of 
Columbia.     (Sept.  27,  1899.) 

DuELL,  C]      ExjKirte  Lawton  d  ah,  67  MS.  Dec.  492. 

4.  The  examiner  held  that  an  application  covers  separate 
and  indei^endent  inventions  which  should  not  be  claimed  in 
one  case  and  preparatory  to  requiring  division  rejected  certain 
claims  on  the  ground  ol  aggregation.  Certain  patents  were 
cited  as  showing  the  state  of  the  art,  without  specifically  apply- 
ing them  to  all  of  the  claims  or  attempting  to  give  a  full  and 
complete  action  upon  tlie  merits  of  the  claims.  Appeal  was 
taken  from  the  action  of  the  examiner  in  finally  rejecting  the 
claims  for  aggregation.  In  his  answer  to  the  appeal,  the  exam- 
iner applied  the  references  cited  to  the  appealed  claims  and 
held  that  they  are  anticipated  aside  from  the  question  of  aggre- 
gation. Held,  that  the  question  of  anticipation  was  not  brought 
up  by  the  appeal  and  should  not  have  Ijcen  discussed  by  the 
examiner,  since  the  sole  question  is  as  to  whether  or  not  the 
claims  cover  aggregations,  and  that  is  the  only  question  which 


APPEAL.  17 

can  be  decided    by  the  exaniiners-in-ehief    iii)on    the    appeah 
(Nov.  11,  1809.)  ' 

Gkeelev,  a.  C]      Ex  parte  Ciirleton,  08  ]\LS.  JJee.  189. 

4.  ^Vhen  claims  are  rejected  on  the  applicant's  prior  patent, 
a  review  of  the  facts  in  the  case  to  determine  the  correctness  of 
that  action  must  be  had  in  the  first  instance  on  appeal  to  the 
examiners-in-chief,  and  not  on  petition.      (Nov.  8,  1898.) 
Greeley,  A.  C]      Ex  parte  Wellman,  86  0.  G.  1986. 

5.  Where  petition  was  taken  from  an  action  of  the  examiner 
on  the  ground  that  a  single  reference  had  not  been  cited  show- 
ing in  combination  all  of  the  features  covered  bj^  the  claims, 
but  several  references  wei'e  cited  said  to  show  substantially  the 
several  features,  and  the  claim  was  rejected  on  the  ground  that 
no  invention  was  involved  in  bringing  those  features  together 
in  one  device,  Held,  that  this  is  a  question  of  merits  which  is 
appealable  to  the  exaniiners-in-chief  and  cannot  properly  be 
brought  up  on  petition.      (June  1,  1899.) 

Greeley,  A.  C]      Ex  parte  Perkins,  88  O.  G.  548. 

6.  When  objections  to  the  sufficiency  of  an  affidavit  to  over- 
come a  rejection  based  upon  a  prior  patent  are  raised  by  the 
examiner,  the  question  presented  goes  to  the  merits,  and  an 
appeal  lies  in  the  first  instance  to  the  examiners-in-chief. 
{Ex parte  Boyer,  49  0.  G.  1985,  cited.)  (Oct.  27,  1899!) 
Duell,  C]     £a;  p«r^e  Johnson,  89  0.  G.  1841. 

III.   From  the  Commissioxer  to  the  Court  of  Appeals,  D.  C. 

1.  AMiere  the  decision  of  the  Commissioner  of  Patents  ap- 
pealed from  to  the  Court  of  Appeals  of  the  District  of  Columbia 
was  dated  Decemljer  10,  1898,  but  entry  was  not  made  on  the 
file-wrapper  until  December  12,  1898,  when  the  notice  of  the 
decision  was  sent  to  appellant,  and  appeal  was  taken  to  the 
court  on  January  20,  1899,  Held,  that  the  appeal  was  taken  too 
late  under  Pvule  XX.  of  the  court,  which  requires  an  a])peal  to 
be  taken  within  forty  days  from  the  date  of  the  decision  of  the 
Commissioner,  and  not  afterward.  (C.  A.  D.  C.  Apr.  4,  1899.) 
Alvey,  J.]     *  Burton  r.  Bentley,  87  0.  G.  2326. 

2.  The  rule  limiting  the  time  of  appeal  from  the  decision  of 

2 


18  appp:al. 

the  Commissioner  to  the  court  has  no  reference  to  the  notice  of 
the  decision  given  to  appellant.  It  is  from  the  date  of  the  de- 
cision that  the  time  for  taking  the  appeal  must  be  reckoned,  and 
not  from  the  time  of  sending  notice  of  the  decision  to  the  party 
against  whom  it  is  made.  ^Id. 

3.  The  terms  of  the  rule  must  be  allowed  their  ordinary 
meaning  and  import,  and  they  plainly  limit  the  commencement 
of  the  period  of  forty  days  within  which  an  appeal  can  be  taken 
from  the  date  of  the  decision  appealed  from,  excluding  the  day 
of  the  date.  (Bemis  v.  Leonard,  IIG  ]Mass.  502,  and  Sheets  v. 
Selden,  2  Wall.  189,  cited.)  */d 

4.  Where  it  is  not  pretended  that  appellant  has  been  sur- 
prised or  in  any  manner  prejudiced  b}^  computing  the  time  of 
taking  the  api)eal,  as  he  has  had  ample  time  within  which  to 
appeal,  and  as  he  has  thought  proper  to  delay  the  appeal  until 
after  the  time  for  taking  it  had  elapsed,  Held,  that  he  has  no  one 
to  blame  but  himself,  and  the  appeal  must  be  dismissed.   */r/. 

IV.  Return  of  Appeal  Fees. 

In  all  cases  in  which  additional  references  or  reasons  for  re- 
jection are  given  prior  to  the  actual  hearing  and  decision  of  the 
appeal,  the  applicant  is  permitted  to  withdraw  his  appeal  and 
to  have  his  appeal  fee  returned;  but  Avhere  the  ai:»pellate  tribunal 
affirmed  the  decision  of  the  examiner  on  the  record,  calling 
attention  to  additional  references,  not  for  the  purpose  of  giving 
ground  for  rejection  where  none  existed  before,  but  merely  for 
strengthening  the  position  taken  by  the  exam.iner,  the  appeal 
fee  should  not  be  returned.  (Oct.  24,  1899.) 
Greeley,  A.  C]     Ex  parte  Gayv,  68  MS.  Dec.  77. 

V.  To  THE  Circuit  Court  of  Appeals. 

1.  An    exception    upon    the   sole    ground    that   a   question, 
allowed  b}'  the  trial  judge  to  be  answered,  is  leading,  is  never 
tenable,   for  the  ruling  upon  such  a  question  is  discretionary 
with  the  trial  judge.      (C.  C.  A.,  2d  Cir.      Dec.  7,  1898.) 
Wallace,  J.]     *  Ross  v.   Raphael  Tuck  &  Sons  Co.,  91  Fed. 

Rep.  128. 

2.  Whether  the  several  observations  of  the  trial  judge,  when 
giving  his  exposition  of  the  meaning  of  a  statute,  were  correct  • 


APPLICATIONS.  19 

or  not  need  not  be  considered  on  appeal,  and  if  tlie  ultimate 
ruling  is  right,  it  is  quite  immaterial  whether  or  not  it  was 
reached  upon  a  correct  process  of  reasoning.  */f/. 

3.  "When  all  of  the  steps  necessary  to  perfect  an  ai)peal  to  an 
appellate  court  have  been  properly  taken,  the  action  is  within 
the  control  of  that  court,  and  a  trial  court  should  not  engage  in 
undoing  or  modifying  the  proceedings  bj^  which  such  jurisdic- 
tion has  been  obtained,  and  a  motion  for  leave  to  substitute  an 
appeal  bond  should  te  addressed  to  that  court.  (C.  C,  E.  D. 
N.  Y.     Jan.  28,  1899.) 

Thomas,  J.]     *Morrin  r.  Lawler,  91  Fed.  Rep.  693. 

4.  It  is  the  allowance  of  the  appeal  by  the  trial  court,  and  not 
the  perfecting  of  all  the  steps  necessary  to  a  hearing  of  the 
appeal  in  the  court  above,  which  saves  the  appellant  or  plaintiff 
in  error  from  the  bar  of  the  statutory  period  fixed  for  the  bring- 
ing of  appeals  and  writs  of  error.  Neither  the  issuing  of  the 
citation  nor  the  giving  of  bond  is  jurisdictional.  (C.  C.  A.,  6th 
Cir.     Mar.  28,  1899.) 

Per  Curiam.]     ^Noonan  v.   Chester  Park  Athletic  Club  Co., 
93  Fed.  Rep.  576. 

5.  Where  there  is  an  issue  of  fact  in  the  circuit  court,  and  a 
jury  is  waived,  and  the  cause  is  submitted  to  the  court,  as  per- 
mitted in  §§  649  and  700  Rev.  St.,  there  is  nothing  to  review  in 
the  appellate  court,  except  (1)  rulings  of  the  court  in  the 
progress  of  the  trial,  if  excepted  to  at  the  time  and  duly  pre- 
sented by  a  bill  of  exceptions,  and  (2)  when  the  finding  is 
special,  the  review  may  extend  to  the  determination  of  the 
sufficiency  of  the  facts  found  to  support  the  judgment.  (C.  C. 
A.,  5th  Cir.     Apr.  11,  1899.) 

Pardee,   J.]     ^-Sarrazin  v.  W.   R.   Irby  Cigar  &  Tobacco  Co., 
Lim.,  93  Fed.  Rep.  624. 

Application  s. 

I.  Abandoned. 
(a)  In  General. 
(6)    Revival  of. 

II.  Affidavits.      To  Obtain  Interferences. 


20  APPLICATIONS. 

III.  Amendments. 
(a)  In  General. 
(6)   Election  and  Division. 

(c)  After  Final  Rejection. 

(d)  New  Matter. 

(e)  After  Allowance  under  Ride  78. 
IV.  Attorneys. 

(a)  Powers  of. 

(&)    Use  of  Assignment  Records. 
(c)    Disbarred. 
V.  Claims. 

(a)  Dujjlicate  or  Redundant. 
(6)    Functional  or  Indefinite. 

(c)  Two  Inventions  in  One  Claim. 

(d)  Order  in  Relation  to  Punctuation. 
VI.  Complete. 

Order  in  Relation  to. 
VII.   Division  of. 

(a)  Classification  in  the  Patent  Office. 

(b)  Practice. 

(c)  Process  and  Ajyparatus. 

(d)  Process  and  Product. 

(e)  Different  Processes. 

(/)  Status  of  Invention  in  the  Arts. 
VIII.   Drawings. 

(a)  In  General. 

(b)  Order  in  Relation  to. 
IX.  Examination  of. 

(a)  Information  and  Advice  to  Applicants. 

(b)  Rejection. 

(c)  Actions  Other  than  Rejection. 
X.  Fees. 

Order. 
XI.  Forfeited. 

Renewal  of 
XII.  Model. 


APPLICATIONS.  21 

XIII.  Name  of  Applicant. 

Order. 

XIV.  Oath. 

(a)  New  or  Reneired. 
(h)   SupplemenUd. 
(c)    7/1  Foreign  Countries.      Order. 
XV.  Pending. 

Access  to. 
XVI.   Petition. 

XVII.  Public  X7se  Proceeding. 
XVIII.  Reissue. 

New  Matter. 
XIX.  Specification. 

(a)  III  Genercd. 

(b)  Sufficiency  of  Descrijition. 
XX.  Suspension  of  Action. 

XXI.  By  Administrator  of  Deceased  Inventor. 
XXII.  Joint  and  Sole. 
I.  Abandoned. 

(a)  In  Genercd. 

1.  After  a  decision  of  the  examiner-in-cliief  affirming  the 
decision  of  the  primary  examiner  rejecting  claims  of  an  apphca- 
tion  on  the  ground  of  aggregation,  the  apphcant  requested  the 
examiner  to  cite  references  referred  to  in  a  general  way  by  the 
examiners-in-chief  in  their  decision,  which  request  was  refused, 
and  the  statement  made  that  applicant's  remedy  was  by  appeal 
to  the  Commissioner  on  the  merits  or  petition  to  re-open.  More 
than  two  years  after  the  decision  the  petition  was  filed.  Held,  that 
the  case  did  not  come  under  Rule  66,  even  if  the  examiner 
had  authority  to  re-open,  since  it  does  not  appear  that  he  did 
not  cite  the  best  references  at  his  command,  and  that  the  appli- 
cation is  abandoned.      (Feb.  2,  1899.) 

Greeley,  A.  C]      Ex  parte  jNIerrell,  66  MS.  Dec.  244. 

2.  Where  an  amendment,  presented  in  supposed  compliance 
with  the  decisions  and  recommendations  on  appeal,  but  was  not 
a  complete   and  definite  compliance  with   such   decisions  and 


22  APPLICATIONS. 

recommendations,  in  tliat  it  failed  to  direct  tlie  cancellation  of 
the  rejected  claims,  though  the  amendment  was  presented  in 
good  faith,  and  such  failure  to  cancel  the  claims  was  due  to 
oversight,  Held^  sufficient  to  save  the  case  from  abandonment, 
and  provided  an  amendment  be  promptly  filed  directing  the 
cancellation  of  the  rejected  claims,  the  Examiner  is  directed  to 
enter  it  and  re-open  the  case  for  the  consideration  of  the  previous 
amendment.  (June  7,  1899.) 
Greeley,  A.  C]     Ex -parte  Herzog,  67  MS.  Dec.  151. 

3.  Where  it  was  shown  that  an  amendment  had  been  mailed 
in  ample  time  to  reach  the  office  before  the  expiration  of  the 
two  years,  but  owing  to  the  blizzard  of  February,  1899,  the 
trains  were  delayed,  and  the  amendment  did  not  reach  the  city 
in  time  to  be  delivered  until  the  day  after.  Held  to  be  sufficient 
to  save  the  case  from  abandonment.  The  fact  that  in  other 
cases  "this  applicant  is  in  the  habit  of  taking  the  full  statutory 
period  in  prosecuting  his  cases,"  thereby  unnecessarily  pro- 
longing the  pendency  of  his  applications,  urged  by  the  examiner 
as  a  reason  why  the  rule  should  be  enforced  with  more  than 
usual  stringency  against  him,  is  not  a  sufficient  ground  for 
making  an  exception  unfavorable  to  applicant.     (June  5,  1899. ) 

Greelev,  a.  C]     Ex.  parte  Herzog,  67  MS.  Dec.  147. 

4.  On  July  7,  1899,  an  applicant  made  an  amendment  to  the 
specification,  which  the  examiner  held  was  not  a  compliance 
with  the  requirements  of  the  office  letter  of  July  9,  1898,  in 
which  all  of  the  claims  had  been  rejected  and  a  new  reference 
cited,  and  on  July  11,  1899,  held  that  the  application  was 
abandoned  by  failure  to  prosecute  within  one  year  from  July  9, 
1898;  Held,  that  since  the  action  of  July  9,  1898,  was  not  a 
final  rejection,  applicant  was  entitled  to  a  reconsideration  either 
with  or  without  amendment,  and  the  amendment  of  July  7, 
1899,  was  virtually  a  request  for  a  reconsideration  of  all  matters 
not  covered  by  the  amendment,  and  therefore  the  question  as  to 
whether  or  not  the  amendment  was  a  compliance  with  the 
requirement  before  made  was  immaterial,  and  it  was  not  neces- 
sary for  applicant  to  amend  to  keep  the  case  alive.  The  case  is 
not  abandoned,  and  applicant  is  entitled  to  an  action  on  the 
merits.     (Aug.  17,  1899.) 

Greeley,  A.  C]     Ex  parte  Carroll,  67  MS.  Dec,  874, 


APPI.ICATIOXS.  23 

5.  An  application  was  filed  May  18,  1899,  and  acted  on  by  the 
Office  July  2,  1897.  The  attorne}^  in  the  case  was  disbarred 
from  practice  Oct.  1,  1897,  and  a  new  attorney  was  appointed 
Nov.  13,  1897.  No  further  action  was  taken  in  the  case  until 
July  24,  1899,  and  the  examiner  properly  held  the  case  to  be 
abandoned.  The  disbarment  of  the  attorney  did  not  change 
the  condition  of  the  case  itself  in  any  ]-espect  or  the  kind  of 
action  required,  but  mere]}'  changed  the  person  who  would  be 
permitted  to  take  that  action,  and  while  such  disbarment  might 
be  advanced  as  an  excuse  for  part  of  the  delay  in  acting  on  the 
case  under  a  request  to  revive  under  rule  172,  yet  it  could  not 
be  considered  under  a  petition  from  the  action  of  the  examiner 
holding  the  case  abandoned.      (Oct.  24,  1899.) 

Greeley,  A.  C]     Ex  parte  Larson,  68  MS.  Dec.  79. 

6.  On  jMarch  2,  1897,  the  examiner  rejected  a  series  of  claims 
in  an  application  which  had  been  filed  some  eight  years  before. 
On  July  23,  1897,  the  applicant  presented  an  argument  in  re- 
gard to  the  examiner's  position,  but  did  not  amend  the  claims. 
On  July  29,  1897,  the  examiner  finally  rejected  the  claims  re- 
ferred to.  On  July  29,  1899,  the  applicant  filed  another  argu- 
ment, which  the  examiner  held  was  not  such  an  action  as  the 
condition  of  the  case  required  at  that  time,  and  that  therefore 
the  case  was  abandoned  because  of  applicant's  failure  to  take 
proper  action,  namely,  appeal,  within  two  years  from  the  date 
of  the  last  office  action.  Held,  that  the  examiner's  action  was 
correct  and  that  the  case  is  abandoned.  (Nov.  3,  1899. ) 
Geeeley,  a.  C]     Ex  parte  Hunter,  68  MS.  Dec.  111. 

7.  A  mistake  by  an  examiner  in  rejecting  claims  is  no  valid 
excuse  for  an  applicant's  failure  to  take  proper  action  within 
two  years.  The  statutes  and  rules  clearly  indicate  that  an 
appeal  is  the  proper  remedy  when  an  applicant  thinks  an  ex- 
aminer has  improperly  rejected  his  claims,  and  they  specifically 
provide  that  such  appeal  must  ])e  taken  within  a  specified  time, 
irrespective  of  the  question  whether  or  not  the  rejection  was  in 
fact  proper.  Id. 

8.  If  an  amendment  and  proceedings  relative  thereto,  as  pro- 
vided in  rule  68,  will  not  save  a  case  from  abandonment,  it  is 
clear  that  a  mere  argument  unaccompanied  by  an  amendment 


24  APPLICATIONS. 

will  not  save  it,  and  is  not  such  action  as  the  condition  of  the 
case  requires.  Id. 

9.  The  contention  that  an  application  "was  prosecuted 
within  the  two  years'  limit  liy  the  prei)aration  and  forwarding 
on  August  22,  1899  of  the  amendment  and  argument,  the  same 
being  deposited  in  the  mail  in  proper  season  to  have  been  de- 
livered in  the  Patent  Office  in  one  day  *  *  *"  and  was  there- 
fore "such  action  on  the  part  of  applicants"  as  to  constitute  a 
"legitimate  prosecution  of  the  case  within  the  statutory  limit," 
cannot  be  granted  since  the  Office  cannot  recognize  anything  as 
an  action  until  it  is  actually  received.  The  mere  preparation 
of  the  amendment  within  the  time  is  not  sufficient,  since  that 
does  not  change  the  condition  of  the  case  in  any  respect  until  it 
is  filed.  Held.,  therefore,  that  as  the  statutory  period  expired 
on  August  23,  1899,  and  the  amendment  not  having  been  re- 
ceived until  August  24,  1899,  the  application  is  abandoned. 
(Nov.  10,  1899.) 

Greeley,  A.  C]      Ex  parte  Hall  and  Hall,  68  MS.  Dec.  140. 

10.  By  analogy  to  the  rule  prohibiting  one  of  two  joint  appli- 
cants from  al:)andoning  an  application  by  an  instrument  in 
writing  without  the  consent  of  the  other  applicant  and  any 
assignees,  Held.,  that  one  of  two  joint  applicants  should  not  be 
permitted  to  indirectly  abandon  a  case  by  refusal  to  join  in  its 
prosecution.     (Dec.  1,  1899.) 

Greeley,  A.  C]      Ex  parte  Franklin  and  Tonnar,  68  IMS.  Dec. 
235. 

11.  The  mere  appointment  of  an  attorney  is  not  such  an 
action  as  will  save  a  case  from  abandonment,  since  it  is  not 
within  the  meaning  of  the  rule,  l)ut  is  merely  a  power  to  some 
other  person  to  act.  Id. 

12.  The  record  shows  that  after  various  actions  the  claims 
,  were  rejected  on  references  on  Nov.  9,  1895.     On  May  5,  1896, 

applicant  requested  "re-examination  of  claim  24,"  Avithout  re- 
ferring to  other  rejected  claims,  and  on  Mny  9,  1896,  the  exam- 
iner finally  rejected  claim  24  and  other  claims  on  the  reasons 
and  references  before  cited.  On  Apr.  4,  1898,  nearly  two  years 
later,  applicant  filed  an  amendment  canceling  all  the  claims  and 
substituting  24  new  claims,  but  failed  to  make  any  showing  or 


ArrLicATioNS.  25 

even  a  statement  as  to  avIiv  tlie  amendment  was  not  earlier  pre- 
sented.    Held,  that  tlie  case  became  al)andoned  on  May  9,  1898. 
(Apr.  29,  1899.) 
Greeley,  A.  C]     Ex  parte  Stel)l)ins,  88  0.  (;.  1885. 

13.  Tlie  office  action  of  Jan.  19,  1897,  and  those  prior 
thereto,  contain  rejections  of  claims  on  references  and  a  formal 
requirement  of  division.  On  Dec.  29,  1898,  affidavits  were 
filed  under  rule  75  to  overcome  certain  of  the  references,  and 
the  examiner  refused  to  consider  the  same  on  the  ground  that 
they  were  not  completely  responsive  to  the  requirement  of  di- 
vision, and  in  support  of  his  action  cites  ex  parte  Rappleye,  85 
0.  G.  2096;  and  further,  on  Jan.  23,  1899,  the  examiner  held 
that  the  case  became  abandoned  on  Jan.  13,  1899.  Held,  that 
the  filing  of  the  affidavits,  while  not  completely  responsive  to 
every  requirement,  yet  it  was  responsive  to  the  action  rejecting 
the  claims,  and  was  such  as  the  condition  of  the  case  required, 
and  therefore  saved  it  from  abandonment,  since  it  was  appar- 
ently made  in  good  faith.      (Apr.  29,  1899.) 

Greeley,  A.  C]     £":(;  pa W^^  Wright  &  Stebbins,  88  0.  G.  1161. 

14.  Action  by  an  applicant  made  in  good  faith,  which  is  such 
action  as  the  condition  of  tlie  case  requires,  is  sufficient  to  save 
the  case  from  abandonment,  although  it  is  not  com})letely  re- 
sponsive to  every  requirement  made.  Id. 

15.  It  cannot  be  properly  held  that  an  application  has  no 
standing  before  the  Office  because  the  inventor  is  dead  and  the. 
executor  has  not  asserted  his  rights.  The  legal  representatives 
of  the  deceased  have  the  right  to  prosecute  the  application,  and 
the  mere  fact  that  the}^  are  not  known  to  the  Office  and  that 
they  have  not  actually  prosecuted  the  case  b}'  any  action  on 
their  part  cannot  be  considered  an  abandonment  of  the  applica- 
tion until  the  expiration  of  the  two  years  allowed  by  law  for 
amendments.  (Decker  r.  Loosley,  77  0.  G.  3140.  Refrigerat- 
ing Co.  V.  Featherstone,  62  0.  G.  741.)  (July  3,  1899.) 
DuELL,  C]     Handley  v.  Bradley,  89  O.  G.  522. 

16.  Although  an  applicant's  death  may  be  legalh'  established, 
his  application  is  a  legal  pending  application  and  an  interference 
cannot  be  dissolved  upon  the  ground  tliat  bis  application  has 
no  standing  in  the  Office.  /(/. 


26  APPLICATIONS. 

I.  Abandoned. 

(6)  Revival  of. 

1.  Where  at  the  time  of  fihng  the  appUcation,  the  applicant 
had  entered  into  a  partnershijD  for  developing  the  invention  and 
all  his  means  were  in  said  business,  Avhich  failed  while  the  ap- 
plication was  pending,  and  was  sold  out  by  the  sheriff,  Held^ 
that  the  failure  to  prosecute  was  sufficiently  excused,  and  being 
unable  to  file  a  new  application  because  of  more  than  two 
years'  public  use  and  because  of  the  granting  of  a  foreign  patent, 
the  petition  for  revival  was  granted.  (Mar.  23,  1899.) 
DuELL,  C]      Ex  parte  Seyfang,  66  MS.  Dec.  407. 

2.  Where  an  applicant  arranged  with  his  licensee  to  attend  to 
the  prosecution  of  the  application,  to  keep  applicant  posted  as 
to  the  i3rogress  of  the  case,  to  confer  with  the  attorneys  and  to 
direct  them  as  to  the  prosecution  of  the  application,  the  licensee 
occujDied  the  place  of  the  applicant  and  the  attorneys  were 
powerless  in  the  case  except  by  express  direction  of  the  licensee, 
and  if  by  inaction  on  his  part  or  by  any  miscarriage  of  the  ar- 
rangements, failure  to  take  action  in  order  to  avoid  abandon- 
ment ensued,  the  applicant  was  alone  to  blame,  and  his  petition 
to  revive  denied.     (Aug.  28,  1899.) 

Geeeley,  a.  C]     Ex  parte  Noyes,  67  MS.  Dec.  409. 

3.  A  communication  had  been  filed  within  the  two  years 
allowed  for  action,  but  by  reason  of  the  fact  that  it  did  not 
correctly  identify  the  ai)plication  intended  or  any  applica- 
tion on  file,  it  was  not  entered  and  was  returned.  Two  days 
after  the  two  3'ears  had  expired  an  amendment  had  been  filed 
properly  identifying  the  case,  but  was  properly  refused  admis- 
sion on  the  grcnmd  that  the  case  was  abandoned.  The  facts  of 
the  case,  however,  show  that  tliere  was  an  attempt  to  act  on  the 
case  within  the  two  years,  and  the  failure  to  do  so  was  due  to 
inadvertence  or  mistake,  and  the  circumstances  warrant  a  re- 
vival of  the  application  under  the  provisions  of  rule  172. 
(Sept.  27,  1899.) 

Greeley,  A.  C]     Ex  parte  Shaw,  67  MS.  Dec.  497. 

4.  Where  the  claims  of  an  application  were  rejected  July  20, 
1899,  and  an  amendment  filed  July  20,  1899,  containing  an  ad- 
ditional claim  which  was  held  not  to  be  responsive  to  the  last 


APPLICATIONS.  27 

Office  action,  and  the  case  was  therefore  declared  to  he  alian- 
doned;  later  ap})licant  was  notified  that  his  projier  remedy  was 
by  petition  to  revive  under  rule  172.  Held,  that  the  excuse  for 
delay  ])eing  that  when  the  case  Avas  taken  uji  for  aniemhnent  the 
Office  letter  could  not  be  found  and  it  was  too  late  to  procure  a 
cop3',  and  further,  a})plicant  was  engafjed  in  some  ex])eriniental 
work  which  progressed  slowly  from  lack  of  funds,  the  a})plica- 
tion  could  be  revived  and  applicant  given  leave  to  tile  a  respon- 
sive amendment,  to  be  examined  on  its  merits.  (Oct.  G,  1899.) 
DuELL,  C]      Ex  parte  Penner,  68  MS.  Dec.  28. 

5.  The  reason  for  .not  acting  sooner  is  set  forth  as  follows: 
"Pecuniary  reasons,  however,  prevented  our  pushing  the  prose- 
cution ci  the  case  to  such  extent  as  we  desired,  and  we  have 
been  unable  to  devote  money  to  this  work  owing  to  prolonged 
business  dejn'ession,  resulting  in  bankruptcy  proceedings,  which 
are  still  pending." 

It  is  not  definitel}^  stated  that  apj^licants  were  unable  to  take 
action  in  the  case  at  any  time  within  the  two  years  prescribed 
by  the  statute,  and  even  if  the  above-quoted  statement  is  con- 
strued as  meaning  that  they  were  unable  to  take  such  action 
during  the  lousiness  depression,  there  is  nothing  to  show  that 
the  depression  extended  over  the  entire  period  of  two  years. 
No  particulars  are  given,  and  tlie  mere  fact  that  there  was  a 
business  depression  does  not  show  that  action  could  not  have 
been  taken  as  well  within  the  two  years  as  one  day  after  that 
time  had  expired.  (Nov.  10,  1899.) 
Greeley,  A.  C]     Ex  imrte  Hall  &  Hall,  68  MS.  Dec.  140. 

6.  Where  a  statement  is  intended  to  convey  the  impression 
that  a  device  has  been  in  public  use  for  more  than  two  years 
and  that  as  a  consequence  a  new  application  cannot  be  filed, 
it  must  contain  something  more  than  a  mere  inference  from 
vague  and  indefinite  statements  to  establish  the  fact  that  hard- 
ship would  be  worked  by  refusing  to  revive  the  case.  Id. 

7.  Where  it  was  shown  that  A  and  B  are  Joint  applicants; 
that  A  refused  to  join  in  the  prosecution  of  the  application  and 
it  was  impossible  for  B  to  take  action  until  the  Office  recognized 
his  right  to  do  so  without  the  acquiescence  of  A;  that  B  ap- 
pointed his  attorneys  within  the  two  years  allowed  by  law,  but 


28  APPLICATIONS. 

neither  he  nor  his  attorneys  could  take  action  in  that  time  in 
view  of  the  refusal  of  the  Office  to  recognize  his  right  to  prose- 
cute the  case  alone,  Held,  that  in  so  far  as  B  is  concerned  the 
delay  was  unavoidaljle,  and  therefore  the  case  is  revived  under 
rule  172.      (Dec.  1,  1899.) 

Greeley,  A.  C]      Ex  jxirtc  Franklin  and  Tonnar,  68  MS.  Dec. 
235. 

II.  Affidavits. 

To  Obtain  Intcrfcrcnre. 

1.  Where  two  applications  were  pending  at  the  same  time 
and  one  went  to  patent  having  claims  that  the  other  did  not 
contain,  which  claims  were  subsequently  inserted  in  the  appli- 
cation remaining  in  the  Ofiice,  and  an  interference  was  de- 
manded with  the  patent,  U})on  petition  from  the  examiner 
requiring  that  an  affidavit  should  be  filed  under  rule  94  (2)  be- 
fore the  interference  would  be  declared.  Held,  that  in  view  of 
rule  96,  which  requires  an  examiner  to  notify  one  party  of  the 
claims  made  by  the  other,  the  patent  was  inadvertently  allowed, 
and  the  applicant  should  not  l)e  prejudiced  by  the  fact  that  the 
examiner  overlooked  or  ignored  rule  96.  (Nov.  24,  1899.) 
DuELL,  C]     Ex  parte  Tizley,  89  0.  G.  2259. 

2.  Held,  further,  that  had  the  examiner  observed  the  rule  he 
would  not  have  required  an  affidavit  under  rule  94  (2),  but 
would  have  declared  the  interference  under  section  1  of  that 
rule.  In  such  a  case  as  this  the  second  section  of  the  rule  does 
not  apply,  and  the  interference  should  be  declared  and  the 
rights  of  the  parties  determined  on  the  same  ground  as  if  both 
were  applicants.  Id. 

III.  Amendments. 

(a)  In  General. 
1.  Courts,  in  passing  upon  a  patent  which  has  been  granted 
and  which  is  not  open  to  amendment  like  an  application,  over- 
look many  formal  defects,  in  order  that  the  grant  may  not  fail 
entirely,  which  they  would  not  sanction  if  it  were  possil)le  to 
correct  them  by  amendment;  but  so  long  as  an  application  is 
pending  and  is  open  to  amendment  the  same  reason  for  over- 
looking formal  defects  does  not  exist,  and  it  is  the  recognized 


ArPIJCATIONS.  29 

duty  of  the  Office  to  see  to  it  that  the  statutory  veciuirement  tliat 
appHcants  clearly  and  ])ro])crly  set  forth  their  inventions,  l.)oth 
in  the  specification  and  claims,  so  that  there  will  he  no  uncer- 
tainty as  to  what  is  included,  is  complied  with.  (Apr.  10, 
18990 
Greeley,  A.  C]      Ex  jxirte  Averell,  ()6  MS.  Dec.  442. 

2.  The  insertion  ])y  amendment  in  an  original  ap})lication  of 
the  term  "  preferahly  "  in  descrihing  the  structure  of  certain 
features  should  l)e  permitted  and  cannot  properly  be  objected  to 
as  involving  a  departure  from  the  original  disclosure.  (Jan.  G, 
1899.) 

Greeley,  A.  C]     Er  parte  Hollis,  86  0.  G.  489. 

3.  So  long  as  an  application  is  pending  before  this  Office  the 
api^licant  may  be  permitted  to  amend  in  the  direction  of  broad- 
ening the  statement  of  his  invention,  provided  he  does  not 
change  the  invention  on  which  that  statement  is  l)ased,  and  if 
his  specification  and  claims  as  filed  do  not  adequately  express 
the  full  breadth  of  his  invention  he  may  amend  in  such  way  as 
to  secure  full  protection.  /(/. 

III.    AmExNTDMENT., 

(6)  Election  and  Division. 
When  the  primary  examiner  required  a  division,  holding  that 
the  claims  covered  two  independent  inventions,  and  applicant 
complied  by  erasing  the  claims  as  to  one  invention.  Held,  that 
having  his  election  as  to  which  invention  he  would  claim,  ap- 
plicant is  estopped  from  recalling  it,  the  claims  remaining  in 
the  case  now  being  under  rejection.  (Aug.  28,  1899.) 
Greeley,  A.  C]     Ex  parte  Clausen,  88  0.  G.  2242. 

III.  Amendment. 

(c)  After  Final  Rejection.. 
1.  Where  after  final  rejection  claims  are  sul)niitted  which  not 
only  change  the  form  of  expression,  but  also  change  the  scope 
of  the  claims,  they  cannot  properly  be  entered  on  the  ground 
that  they  place  the  claims  already  in  the  case  in  better  form  for 
appeal,  since  they  are  not  the  same  in  substance  but  are  new 
claims  requiring  a  new  examination  to  determine  their  patent- 
ability. (Nov.  11,  1899.) 
Greeley,  A.  C]     Ex  parte  Waring,  68  MS.  Dec.  170. 


30  APPLICATIONS. 

2.  A  statement  that  applicant  thought  the  claims  would  be 
allowed  as  they  stood  upon  reconsideration  and  that  amend- 
ment was  unnecessary,  is  not  a  verified  showing  as  contem- 
plated by  rule  68,  and  is  alone  clearly  no  good  reason  upon 
which  to  reopen  a  case  after  final  rejection,  since  such  a  state- 
ment could  be  made  in  every  case  in  which  the  claims  are 
finally  rejected,  and  it  would  thus  be  impossible  to  bring  the 
prosecution  of  any  case  to  a  conclusion  except  at  the  will  of  the 
applicant.  Id. 

3.  Rule  68,  prohibiting  the  entry  of  amendments  touching 
the  merits  after  a  case  is  in  condition  for  appeal  except  upon  a 
proper  showing,  unless  the  case  is  in  fact  in  condition  for  ap- 
peal and  the  consideration  before  the  primary  examiner  has 
been  properly  closed,  presupposes  that  the  final  action  by  the 
examiner  was  proper  and  in  order  ;  for  otherwise  the  alleged 
final  action  has  no  force  or  validity  and  does  not  in  fact  place 
the  case  in  condition  for  appeal,  notwithstanding  the  allegation 
to  that  effect  in  the  action  itself.  Id. 

III.  Amendment. 

(d)  New  matter. 

1.  After  the  termination  of  public  use  proceedings,  an  amend- 
ment to  the  application  was  presented,  which  the  examiner 
refused  to  enter  on  the  ground  of  new  matter.  In  the  applica- 
tion the  applicant  stated  that  one  of  the  steps  in  his  process  was 
one  "commonly  used,"  and  in  the  amendment  he  stated  that 
this  step  was  not  old,  and  was  a  part  of  his  jDresent  invention. 
This,  under  the  circumstances,  Avas  a  departure  from  the  original 
invention,  and  could  not  be  claimed  in  the  present  application, 
but  only  in  a  separate  application  as  provided  in  rule  70.  (July 
27,  1899.) 

Greeley,  A.  C]     Ex  parte  France,  67  MS.  Dec.  324. 

2.  The  question  whether  or  not  matter  sought  to  be  intro- 
duced into  a  pending  application  is  to  be  refused  as  new  matter 
is  quite  a  different  question  from  the  question  whether  or  not 
such  matter  may  be  introduced  in  a  re-issue  application.  (Jan. 
6,  1899.) 

Greeley,  A.  C]     Ex  parte  Hollis,  86  0.  G.  489. 

3.  When  a  patent  has  issued,  the  specification  and  claims  are 


APPLICATIONS.  31 

no  longer  open,  as  a  matter  of  course,  to  the  same  amendments 
which  could  have  been  made  before  issue,  since  the  applicant 
for  re-issue  must  show  not  only  that  the  amendment  is  neces- 
sary to  the  protection  of  his  rights,  but  also  satisfactory  reasons 
why  it  was  not  made  before  the  issuance  of  the  patent.        Id. 

III.  Amendments. 

(d)  After  nllowance  under  Ride  78. 

1.  Where  a  claim  was  offered  in  an  allowed  application  which 
the  examiner  stated  to  be  patentable  over  the  art,  but  the  ad- 
mission of  which  he  refused  to  recommend  under  Rule  78,  Held, 
that  this  is  clearly  a  case  where  the  amendment  should  be  per- 
mitted, for  Rule  78  M'as  amended  to  meet  just  such  cases.  (Oct. 
4,  1899.) 

DuELL,  C]      E.r  parte  O'Connor,  89  0.  G.  1141. 

2.  Held,  further,  that  had  the  examiner  recommended  that 
the  amendment  be  admitted  without  withdrawing  the  ease  from 
issue,  justice  would  have  been  done  to  the  applicant,  his 
attorney  would  have  been  saved  the  labor  of  preparing  a  brief, 
while  the  examiner  and  the  clerical  force  of  the  Office  would 
have  been  spared  much  unnecessary  labor.  Id. 

Order. 
Hereafter  all  amendments  proposed  to  allowed  applications, 
and  all  petitions  and  requests  relating  thereto,  shall  be  filed  with 
the  docket  clerk,  and  transmitted  by  him  to  the  primary  exam- 
iner for  report.  If  the  examiner  shall  report  favorably  to  the 
admission  of  such  amendment,  the  matter  will  be  laid  before 
the  Commissioner  for  immediate  dfetermination.  If  the  exam- 
iner shall  report  unfavorably,  the  case  will  be  docketed,  and 
will  be  heard  and  decided  by  the  Commissioner  in  regular 
course,  unless  good  reasons  shall  appear  for  immediate  action. 

IV.  Attorneys. 

(a)  Powers  of. 
1.  ^^'here  a  compan}'  had  entered  into  an  agreement  with  an 
applicant,  respecting  the  subject  matter  of  his  application,  but 
there  was  no  assignment  of  record,  and  the  application  even 
was  not  on  file  at  the  time  of  entering  into  such  agreement,  the 
protest  of  said  compan}'  against  the  revocation  of  the  power  of 


32  APPLICATIONS. 

attorney  by  the  applicant,  cannot  receive  favoral)le  considera- 
tion.    (Aug.  25,  1899.) 
Greeley,  A.  C]     Ex  parte  Swan,  67  MS.  Dec.  398. 

2.  In  order  for  such  a  protest  to  receive  favorable  considera- 
tion it  must  appear  of  record  that  the  conii^any  are  assignees  of 
an  entire  interest  in  the  application  of  record  as  provided  by 
rule  20,  but  in  view  of  the  showing  made  the  company  should 
be  allowed  access  to  the  files  of  this  application,  and  this 
through  an  attorney  of  their  own  selection;  and  also,  when  re- 
quested, to  have  copies,  at  usual  rates  of  all  actions,  either  by  the 
Office  or  by  the  applicant,  during  the  progress  of  the  case.   Id. 

3.  An  attorney  appointed  by  alleged  assignees  will  not  be 
recognized  in  the  prosecution  of  an  application  unless  an  assign- 
ment clearly  identifies  that  particular  application,  so  that  there 
can  be  no  doul^t  that  it  is  the  one  referred  to.  The  Office  re- 
quires certainty  and  not  mere  probability  in  such  matters. 
(Aug.  18,  1899.) 

Greeley,  A.  C]     Ex  parte  ^^'illiamson,  88  0.  G.  2065. 

4.  An  applicant  is  bound  by  the  acts  of  his  attorney,  whether 
made  by  the  principal  attorney  or  by  his  associate  of  record. 
(Aug.  28,  1899.) 

Greeley,  A.  C]     Ex  parte  Clausen,  88  0.  G.  2242. 

5.  Where  it  appeared  that  an  applicant  had  entered  into  an 
agreement  with  a  company  to  assign  all  the  inventions  pertain- 
ing to  the  subject-matter  of  his  application,  but  had  not  actually 
made  such  an  assignment.  Held,  that  the  OfHce  should  not 
interfere  to  prevent  the  revocation  of  the  power  of  attorney 
given  l:)y  applicant.  {Ex  parte  Gallatin,  59  0.  G.  1104,  cited.) 
(May  29,  1899.) 

Ditell,  C]     In  re  McPhail,  89  0.  G.  521. 

6.  Held,  further,  that  even  if  the  agreement  between  the  com- 
pany and  the  ap})licant  should  be  considered  as  an  assignment, 
the  Office  should  not  recognize  the  right  of  the  company  to  ap- 
point an  attorney  to  prosecute  the  case,  as  the  application  is 
not  identified  in  the  agreement.  {Ex  'parte  Chillingsworth,  80 
0.  G.  1892,  cited.)  Id. 

7.  It  is  the  practice  of  the  Office  to  refrain  from  settling  tlie 
private  rights  of  an  applicant  and  an  alleged  assignee  in  such 


ArrLicATioNs.  33 

matters  as  that  raised   by  this  petition,   as  tlicy  arc  proj^crly 
determined  by  a  eourt  of  ecjuity.  Id. 

IV.  Attorneys. 

(6)    Use  of  Assignment  Records. 

It  has  been  brought  to  my  attention  that  certain  attorneys 
and  other  persons  had  made  use  of  the  assignment  records  to 
obtain  the  addresses  of  persons  having  apphcations  pending  be- 
fore this  ofiice,  in  order  to  send  them  letters  and  circulars  offer- 
ing to  secure  foreign  patents  or  to  transact  other  business  which 
it  may  be  presumed  the  attorneys  of  record  in  such  aj)plicatioTid 
are  competent  and  willing  to  do.  Such  use  of  the  nssignment 
records  is  not  a  proper  or  legitimate  use.  These  records  arc  not 
open  to  the  public  for  any  such  purpose. 

It  is  hereby  ordered  that  any  attorney  or  other  person  who  is 
known  to  make  such  use  of  the  assignment  records  of  tliis  Ofiice 
will  be  denied  access  thereto.       C.  H.  Duell,  Commissioner. 

IV.  Attorneys. 

(c)  Disbarred. 
Order. 

It  is  hereby  directed  that  any  person  who  has  been  disbarred 
from  practice  before  the  Patent  Office  by  order  of  the  Commis- 
sioner be  denied  access  to  the  files  of  the  Office,  either  in  his  own 
capacity  or  as  the  representative  of  any  other  person  or  firm. 

86  0.  G.  1. 

V.  Claims. 

(a)  Duplicate  or  Redundant. 
1.  A  fair  amount  of  tautology  and  reiteration  in  the  claims 
may  be  prudent  and  permissible,  and  the  general  rule  that 
claims  should  be  patentably  different  from  each  other  should 
not  always  ])e  insisted  upon,  particularly  in  cases  where  it  is 
found  difficult  to  express  in  language  the  invention  intended  to 
be  covered  in  its  full  breadth.  But  the  multiplication  of  claims, 
particularly  where  the  invention  is  simple  and  readily  under- 
stood, should  not  be  permitted  to  be  carried  to  such  an  extent 
as  to  obscure  rather  than  make  clear  what  invention  or  dis- 
covery is  intended  to  be  particularly  pointed  out  and  distinctly 
claimed.      (Apr.  10,  1899.) 

Greeley,  A.  C]     i'x  pw^e  Avcrell,  66  MS.  Dec.  442. 
3 


34  APPLICATIONS. 

2.  The  fact  that  all  of  the  claims  "call  for  tlie  same  sub- 
stantive improvement,"  docs  not  prevent  the  api)licant  from 
claiming  specifically  what  he  has  claimed  broadly;  while  the 
differences  may  be  slight,  yet  the  applicant  is  entitled  to  full 
protection  for  his  invention,  and  the  Office  is  not  disposed  to 
unnecessarily  limit  him  in  presenting  claims  defining  it.  (July 
26,  1899.) 

Geeeley,  a.  C]      Ex  parte  Perlinsky,  67  MS.  Dec.  314. 

3.  Where  one  of  the  claims  defined  a  method  of  treating  ores 
without  reference  to  the  employment  of  any  particular  kind  of 
furnace,  and  the  other  claim  limited  its  employment  in  an  ordi- 
nary blast  furnace,  a  clear  distinction  in  the  claims  is  apparent 
and  they  are  not  identical  in  scope.  (Aug.  4,  1899.) 
Greeley,  A.  C]      Ex  parte  Ellershausen,  67  MS.  Dec.  343. 

4.  Where  the  examiner  held  that  the  claims  of  an  application 
were  needlessly  multiplied  and  refused  to  act  further  in  the  case 
until  this  objection  was  removed,  without  citing  references  or  in 
any  manner  indicating  whether  or  not  the  claims  were  regarded 
as  covering  patentable  subject-matter.  Held,  that  these  actions 
are  not  in  accord  with  rule  64  and  the  present  practice  of  the 
Office,  which  require  that  the  examiner  shall  act  fully  and  com- 
pletel}^  on  a  case,  and  set  forth  full_y  and  clearly  the  reasons  for 
his  action.      (Dec.  1,  1899.) 

Geeeley,  A.  C]     Ex  jMuie  Kokernot,  68  IMS.  Dec.  240. 

5.  The  examiner  has  no  authorit}'  to  determine  Avhich  claims 
are  to  be  canceled  where  several  claims  are  duplicates,  but  he 
should  state  specifically  which  claims  he  regards  as  duplicates 
and  why  he  so  regards  them.  The  applicant  is  entitled  to  be 
informed  on  these  questions  so  that  he  may  intelligently  argue 
the  matter  or  determine  for  himself  which  of  the  alleged  dupli- 
cate claims  he  will  cancel.  He  is  entitled  to  an  action  on  the 
merits  of  the  claims,  under  the  provisions  of  rule  64,  before  the 
formal  objections  are  insisted  upon.  Id. 

V.  Claims. 

(b)  Fanctional  and  Indefinite. 
1.   Where  claims  contain  no  statement  as  to  the  structure  of  a 
device,  and  depend  entirely  for  an  indication  of  that  structure 


APl'LICATIONS.  35 

upon  the  statement  of  tlie  function  to  he  jierfornied.  and  cover 
any  and  every  device  for  efi'ectinjj;  t^ucli  function,  and  contain  no 
qualifying  words  setting  forth  the  function  or  capacity  of  the 
device,  Held,  that  sucli  claims  are  vague  and  indelinite,  and 
m  effect  cover  only  the  result  produced  without  regard  to  the 
means  employed.  (June  23,  1800.) 
Geeeley,  a.  C]      Ex  parte  IMackmore,  07  :\IS.  Dec.  210. 

2.  The  mere  fact  that  a  claim  includes  functional  statements 
does  not  make  its  allowance  in  that  form  impropei',  provided  the 
structural  comhination  actually  set  forth  is  patentable.        Id. 

3.  The  statement  in  a  claim  that  "one  of  said  segments  is 
provided  with  a  recess  on  one  side  thereof,"  does  not  necessarily 
imply  that  other  segments  have  no  such  recess,  and  the  ohjec- 
tion  that  such  was  the  implication  from  the  statement  quoted 
should  not  be  insisted  on.      (Aug.  11),  1899.) 

Greeley,  A.  C]     Ex  parte  Bmke,  67  MS.  Dec.  385. 

4.  A  claim  is  objectionable  which  includes  a  "projection 
adapted  to  fit  in  said  recess"  without  including  the  segment 
having  the  projection,  as  obviously  there  could  be  no  projection 
unless  there  is  something  from  which  it  projects.  Id. 

V.  Clai.ais. 

(c)  Two  Inventions  in  One  Claim. 

1.  It  is  the  settled  policy  of  the  Office,  founded  upon  good 
and  substantial  reasons,  not  to  permit  two  separate  inventions 
to  be  covered  by  one  claim.  To  do  so  would  lead  to  uncer- 
tainty in  the  meaning  of  the  claim.  The  fact  that  the  courts 
have  sustained  claims  which  thus  cover  two  separate  inventions, 
because  of  necessity  in  order  that  an  invention  might  be 
adequately  protected,  is  not  to  be  taken  as  an  approval  of  such 
a  practice.     (Apr.  10,  1899.) 

Greeley,  A.  C]     ^a;  par^e  A verell,  66  MS.  Dec.  442. 

2.  A  method  is  a  separate  invention  from  an  apparatus,  and 
both  inventions  should  not  be  included  in  one  claim.  /(/. 

V.  Claims. 

(cZ)  Order  in  relation  to  punctuation. 
It  is  hereby  directed  that  in  the  printing  of  claims  of  applica- 
tions for  patents  the  punctuation  of  the  claims  as  made  by 


36  APPLICATIONS. 

applicants  be  strictly  followed,  and  that  the  punctuation  of  the 
specification  made  hy  applicants  be  not  departed  from,  except 
to  cure  a  manifest  absurdity.  86  0,  G.  350. 

VI.  Complete. 

Order  in  relation  to. 

It  is  hereby  ordered  that  applications  shall  not  be  given  serial 
numbers  as  complete  applications,  and  forwarded  to  the  exam- 
ining divisions  for  examination,  (1)  when  the  petition  has  not 
been  signed  by  the  inventor  ;  (2)  when  the  specification  and 
claims  have  not  been  signed  by  the  inventor  and  the  signature 
attested  by  two  witnesses  (Sec.  4888,  Rev.  Stats.);  (3)  when 
the  drawing  has  not  been  signed  by  the  inventor  or  his  attorney 
in  fact,  and  the  signature  attested  by  two  witnesses  ;  (Sec. 
4889,  Rev.  Stats.,)  and  (4)  Avhen  the  oath  to  the  application 
does  not  fill  the  recpiirements  of  Sections  4887  and  4892,  Revised 
Statutes. 

The  requirements  of  Section  4896,  Revised  Statutes,  respect- 
ing the  right  of  executor  or  administrator  to  make  application 
for  a  patent  for  the  invention  of  a  deceased  person  must  also  be 
observed  before  the  application  will  be  considered  as  complete 
and  forwarded  for  examination.  The  legal  requirements  in 
cases  where  the  application  is  made  by  a  foreign  administrator 
are  stated  in  ex  parte  Ransome  (C.  D.  1870,  143). 

Under  existing  law  no  right  is  given  to  the  guardian  of  an  in- 
sane person  to  make  an  application  for  a  patent  for  the  inven- 
tion of  said  insane  person,  and  such  application  will  not  be 
received  for  examination.* 

This  order,  so  far  as  applicable,  relates  to  applications  for  the 
registration  of  trade-marks,  labels  and  prints,  which  must  in  all 
respects  comply  with  the  requirements  of  the  statutes. 

86  0.  G.  185. 

VII.  Division  of. 

(a)  Classification  in  the  Patent  Office. 

1 .   The  requirement  of  the  examiner  that  the  different  parts 

of  a  dental  chair,  consisting  of  a  hydraulic  lifting  mechanism, 

a  head-rest,  a  back-rest,  and  a  foot-rest,  should  be  made  the 

subject   of   separate   applications,    sustained    as   to   the   lifting 

*  See  "  Amendment  to  Patent  Law  in  Regard  to  Insane  Persons,"  p.  4,  supra. 


APPLICATIONS.  37 

mechanism  and  head-rest,  but  reversed  as  to  the  back-rest  and 

foot-rest.      (Mar.  7,  1899.) 

DuELL,  C]     £!r  par^e  Wilkerson,  87  O.  G.  513. 

2.  Although  foot-rests  and  adjustable  backs  of  a  dental  chair 
are  separately  classified  in  the  Office,  yet  from  the  showing 
made  by  applicant  the  claims  for  these  two  inventions  may  be 
permitted  to  remain  in  the  application,  as  it  does  not  appear 
that  they  form  the  subject  of  separate  invention  or  that  other 
foot-rests  or  back-rests  may  be  substituted  for  those  made  for 
the  particular  chair  shown.  Id. 

3.  The  hydraulic  means  for  raising  and  lowering  the  chair  is 
a  mere  improvement  on  old  devices  and  does  not  in  any  manner 
modify  the  operation  of  the  devices  covered  by  the  other  claims, 
and  therefore  should  l)e  made  the  subject  of  sej^arate  invention. 

4.  The  head-rest  is  a  mere  improvement  and  is  not  especially 
adapted  for  the  particular  chair  shown,  and  other  head-rests 
may  be  substituted  for  this  one,  and  as  it  is  separately  classified 
in  the  Office  classification  from  other  parts  of  a  dental  chair  and 
has  been  made  the  subject  of  separate  invention,  it  should  be 
put  in  an  application  separate  from  the  other  parts  of  the  chair. 

Id. 

5.  Where  devices  are  independent  of  each  other  and  do  not 
mutually  contribute  to  i)roduce  a  single  result  and  the  action  of 
one  does  not  in  any  manner  modify  or  affect  the  action  of  the 
other,  they  should  not  be  permitted  to  be  covered  by  one  appli- 
cation.     (E.r  par^e  Williams,  83  0.  G.  1346,  cited.)  Id. 

6.  Although  it  has  been  the  practice  of  the  Office  to  allow  all 
parts  of  a  dental  chair  to  be  claimed  in  one  application  should 
applicant  so  elect,  the  time  has  come,  owing  to  the  increased 
number  of  patents  in  the  Office  and  the  extension  of  the  field  of 
search,  when  this  practice  should  be  discontinued.  Id. 

7.  When  an  application  shows,  describes  and  claims  a  device 
which  in  its  entirety  presents  subjects-matter  which  are  classified 
in  different  divisions  of  the  Office,  Held,  that  division  should 
be  required  and  separate  applications  presented,  each  of  which 
should  include  only  claini'^  to  devices  which  are  classified  in  a 
single  division.      (July  27,  1899.) 

Greeley,  A.  C]     ^r  par^e  Rouse,  88  0.  G.  2242. 


38  APPLICATIONS. 

VII.   Division  of. 
(6)  Practice. 

1.  Where  the  examiner  in  requiring  division  had  made  a 
cursory  examination,  and  given  the  apphcant  the  result  of  his 
examination,  Held,  that  this  is  all  the  practice  of  the  Office 
requires.      (May  16,  1899.) 

DuELL,  C]     Xr  par^e  Patrick.     67  MS.  Dec.  58. 

2.  Where  an  application  is  held  to  cover  two  distinct  inven- 
tions, but  has  claims  on  alleged  coin1)inations  of  those  inven- 
tions which  are  held  to  be  mere  aggregations.  Held,  that  division 
should  not  be  insisted  upon  until  the  question  of  aggregation  is 
determined.     (Aug.  24,  1899.) 

Greeley,  A.  C]     Ex  parte  Feucht,  88  0.  G.  2066. 

3.  Amended  Rule  41  applies  to  applications  filed  prior  to  the 
promulgation  of  the  rule  as  well  as  to  those  filed  subsequently 
thereto.      (Oct.  10,  1899.) 

DuELL,  C]      Ex  parte  Farquhar,  et  al,  89  0.  G.  706. 

4.  It  is  a  well-settled  principle  that  enactments  which  are  re- 
medial in  their  nature  and  which  impair  no  vested  rights  or  the 
obligations  of  a  contract  are  retroactive.  Id. 

5.  It  has  been  the  practice  of  the  Office  Avhenever  amend- 
ments to  the  rules  have  been  made  to  apply  the  amended  rules, 
so  far  as  they  w^ere  applicable,  to  all  pending  cases.  {Ex  parte 
Macmaster,  80  0.  G.  1475. )  Id. 

6.  The  Rules  of  Practice  of  this  Office  themselves  are  authority 
for  applying  amended  Rule  41  to  applications  filed  prior  to  its 
promulgation.  Rule  42  provides  that  it  is  within  the  discretion 
of  tlie  primar}^  examiner  to  require  division  at  any  time  before 
final  action  on  the  case.  Under  this  rule  it  matters  not  whether 
the  claims  have  been  considered  on  the  merits  before  requiring 
division.  This  requirement  may  be  mode  at  any  time  during 
the  examination  of  the  case.  Id. 

7.  An  applicant  Avho  has  had  his  claims  considered  on  the 
merits  before  the  requirement  of  division  has  been  favored  by 
the  Office  to  the  extent  that  he  has  had  an  action  on  the  merits 
on  all  of  his  claims  instead  of  on  only  one  set  thereof,  as  would 
have  been  the  case  had  division  been  made  before  such  action 
was  given.  Id. 


ArPLICATIONS.  39 

VII.   Division  of. 

(c)  Process  ami  Apparatus. 

1.  Process  and  a})paratus  are  sejjaratc  and  independent  in- 
ventions, and  claims  covering  both  should  not  lie  joined  in  the 
same  apphcation.      (July  11,  1899.) 

DuELL,  C]      Ex  parte  Boucher,  88  0.  G.  545. 

2.  The  argument  that  claims  for  the  process  and  apparatus 
should  be  [)ermitted  to  be  joined  in  the  same  application  in  the 
interest  of  inventors  to  save  them  from  the  expense  of  iiling  two 
applications  is  of  little  force  in  view  of  the  fact  that  the  statutory 
charge. for  the  examination  of  an  application  is  reasonable,  and 
it  Avould  be  unjust  to  the  Government,  to  the  public  at  large, 
and  to  other  inventors  to  permit  one  of  their  number  to  present 
several  inventions  for  examination  under  a  single  fee  and  receive 
more  of  the  time  of  the  examiner  than  he  had  jiaid  for.  (Ex 
parte  Yale,  C.  D.  1869,  110,  cited.)  Id. 

3.  The  argument  that  claims  for  process  and  for  api)aratus 
should  be  permitted  to  be  joined  in  the  same  application  be- 
cause the  courts  have  not  declared  patents  invalid  as  covering 
more  than  one  invention  does  not  rest  on  any  hrni  foundation, 
and  the  answer  to  it  is  that  while  there  are  numerous  cases  in 
which  it  has  been  held  that  a  patent  once  granted  is  to  be  liber- 
ally construed,  and  that  it  is  to  be  presumed  that  pul)lic  officers 
do  their  duty,  that  the  court  will  not  inquire  into  slight  defects 
or  mere  informalities  in  the  grant  of  Letters  Patent  where  there 
is  a  meritorious  invention,  yet  it  would  be  a  grave  error  to  found 
upon  such  decisions  a  rule  of  action  for  the  Commissioner,  for  it 
by  no  means  follows  because  a  patent  has  been  sustained  not- 
Avitlistanding  certain  informalities  in  the  issue,  that  every  suc- 
ceeding patent  is  to  exhibit  the  same  informalities.  (Ex  parte 
Yale,  C.  D.  1869,  110,  cited.)  Id. 

4.  Process  and  apparatus  should  not  be  joined  in  the  same 
application  because  they  are  examinable  in  the  same  division. 
The  classification  of  inventions  is  necessarily  subject  to  frecjuent 
changes  through  the  advance  in  the  arts,  requiring  the  organiza- 
tion of  new  divisions  and  the  establishment  of  new  classes  and 
sub-classes.  It  naturally  follows  that  a  decision  based  upon  this 
ground,  while  api)lying  at  the  time  when  it  was  rendered  to  the 


40  APPLICATIONS. 

case  in  point,  might  not  apply  to  an  identically  similar  case 
thereafter.  Id. 

5.  While  it  may  be  that  a  perfect  examination  as  to  the  nov- 
elty of  an  apparatus  requires  the  same  labor  on  the  part  of  the 
examiner  that  would  be  required  if  process  and  apparatus  were 
both  claimed  in  the  same  application,  yet  this  cannot  always  be 
so,  and  even  though  one  examination  will  answer  for  both  pro- 
cess and  apparatus  claims,  yet  that  affords  no  good  reason  for 
permitting  two  inventions  to  be  claimed  in  one  application.  An 
examination  system  to  be  of  value  must  be  a  perfect  one,  and 
perfection  will  be  more  readily  attained  by  the  requirement 
that  separate  applications  be  filed  for  a  process  and  an  appar- 
atus. Id. 

6.  The  prior  decisions  on  the  question  of  devision  between 
process  and  apparatus  reviewed  and  Held,  that  the  practice  of  the 
Office  on  this  question  would  be  less  liable  to  frequent  change  if 
a  rule  clearly  setting  forth  the  line  of  action  to  be  followed  were 
promulgated,  and  change  in  rule  41  indicated.  Id. 

VII.   Division  of. 

(fl)  Process  and  Product. 
Where  the  examiner  required  division  between  a  set  of  claims 
covering  })rocesses  of  making  alloys,  and  a  claim  covering  an 
alloy  which  upon  examination  was  found  to  be  the  product  of 
the  process  of  one  of  the  set  of  claims,  and  furthermore,  both 
process  and  product  are  examinable  in  the  same  division.  Held, 
that  the  claims  should  not  be  separated.  (May  16,  1899.) 
DuELL,  C]      Ex  parte  Patrick,  67  MS.  Dec.  58. 

VII.  Division  of. 

(e)  Different  Processes. 

1.  Where  in  one  claim  a  step  in  a  process  covered  by  another 
claim  is  omitted  without  changing  the  order  in  which  the  other 
steps  in  the  process  are  performed.  Held  that  the  claims  do  not 
cover  such  different  processes  that  it  is  necessary  to  put  them  in 
separate  applications.      (May  1,  1899.) 

Greeley,  A.  C]     Ex  parte  Oxnard  and  Baur,  88  0.  G.  1526. 

2.  An  applicant  may  properly  in  one  case  have  claims  cover- 
ing the  principal  or  essential  steps  of  a  process  and  other  claims 


APPLICATIONS.  41 

including  those  steps,  together  with  otlicr  specific  steps  which 
arc  not  ahsolutely  necessary  to  the  performance  of  the  process, 
but  which  add  to  its  efficiency  or  make  its  operation  more  per- 
fect. Id. 

VII.  Division  of. 

(/)  Status  of  Invention  in  the  Arts. 

1.  In  an  apphcation  for  a  patent  on  a  voting  machine,  division 
was  properly  re<iuired  between  the  registering  mechanism  and 
the  voting  mechanism,  inasmuch  as  registering  mechanism  has 
acquired  a  definite  place  in  art  and  manufacturing,  and  can  be 
used  in  other  relations  than  with  the  voting  mechanism  shown 
in  the  case.     (Jan.  7,  1899.) 

Greeley,  A.  C]     E'x  j)ar/e  Tuttle,  66  MS.  Dec.  145. 

2.  Division  was  properly  required  between  the  ai)paratus  for 
bending  metallic  printing  forms  to  approximately  the  shape  of 
the  printing  cylinder,  and  the  apparatus  for  further  bending 
them  info  exact  form  and  ascertaining  the  relation  the  engraved 
surface  should  have  to  the  impression  surface,  so  that  by 
"underlaying"  at  the  proper  places  the  hghts  and  shades  of 
the  printed  picture  may  be  properly  brought  out.  The  first 
belongs  to  the  art  of  metal-bending,  and  the  second  to  the  art  of 
printing.      (Aug.  29,  1898.) 

Greeley,  A.  C]     Ex  2xirte  Osborne,  86  O.  G.  492. 

VIII.  Drawings. 

(a)  In  General. 

1.  A  party  may  upon  showing  a  single  s])ecific  structure 
present  claims  of  such  breadth  as  to  include  n}any  different 
modifications  of  it,  but  that  does  not  give  him  the  right  subse- 
quently to  show  every  modification  he  chooses  merely  because 
his  claim  is  l)road  enough  to  apply  to  it.  (Feb.  21,  1899.) 
Greeley,  A.  C]     Ex  parte  Sattley,  66  MS.  Dec.  345. 

2.  Where  the  subject-matter  of  two  figures  of  a  drawing  was 
not  covered  l)y  any  claim,  l)Ut  such  figures  were  used  to  illus- 
trate modified  forms  of  certain  adjuncts  of  the  device  covered  by 
the  claims,  so  as  to  show  that  applicant  was  not  limited  to  the 
use  of  any  specific  form  of  such  adjuncts,  they  were  allowed  to 
remain  in  the  case,  but  applicant  was  required  to  amend  the 


42  APPLICATIONS. 

descriiition  to  set  forth  that  these  figures  were  used  for  that  pur- 
pose only.      (May  19,  1899.) 
DuELL,  C]     Exjxirte  Lilly,  67  MS.  Dec.  80. 

3.  After  applicant  had  complied  with  the  requirement  of 
division  and  properl}^  limited  his  claims,  the  examiner  required 
the  cancellation  of  certain  figures  of  the  drawings,  for  the  reason 
that  they  were  unnecessary  to  the  disclosure  of  the  invention 
claimed.  Held,  that  such  figures  should  ordinarily  be  canceled, 
but  inasmuch  as  they  were  on  the  same  sheet  with  another 
figure  which  it  was  necessary  to  retain,  and  which  could  not  be 
transferred  to  another  sheet,  and  such  cancellation  would  not 
reduce  the  number  of  sheets,  and,  further,  some  such  means  as 
illustrated  in  such  figures  were  necessary  to  the  operation  of  the 
devices  claimed,  they  should  be  allowed  to  remain,  together  with 
the  short  description  thereof  which  appeared  in  the  specification. 
(Aug.  19,  1899.) 

Greeley,  A.  C]     Ex  jmrte  Person,  67  MS.  Dec.  382.  - 

4.  Where  it  seemed  obvious  that  the  device  would  not  operate 
as  described  in  the  original  specification  so  long  as  a  certain 
aperture  shown  in  the  drawings  was  not  closed,  and  that  this 
would  be  recognized  by  any  mechanic  upon  examining  the  de- 
vice, it  seemed  clear  that  such  aperture  was  shown  by  the  drafts- 
man through  clerical  error,  inasmuch  as  the  description  of  the 
function  of  such  aperture  Avas  inconsistent  with  the  descrij^tion 
of  the  operation  of  the  device,  Held,  therefore,  that  the  failure 
to  show  the  aperture  closed  and  the  insertion  of  the  description 
of  its  function  were  due  to  inadvertence  and  constituted  such 
clerical  errors  as  niay  be  corrected  by  amendment,  and  such 
amendment  would  not  involve  the  introduction  of  new  matter 
into  the  apphcation.     (Sept.  7,  1899.) 

Greeley,  A.  C]     Ex  parte  Chace,  67  MS.  Dec.  427. 

5.  Rule  49,  as  well  as  the  statute,  provides  that  when  the 
nature  of  the  case  admits  of  a  drawing  the  applicant  shall  fur- 
nish one;  therefore  where  the  results  of  the  successive  steps  of  a 
process  could  be  represented  in  a  drawing,  such  drawing  was 
properly  required.      (Sept.  8,  1899.) 

Greeley,  A.  C]     Ex  parte  Daniel,  67  MS.  Dec.  432. 

6.  Where  a  mistake  was  made  by  the  Office  in  issuing  a 


APPLICATIONS.  43 

patent,  and  upon  request  of  the  patentee  it  was  decided  to  re- 
issue the  patent  under  rule  170  at  the  exjjense  of  the  Office. 
Held  that  a  new  drawing  should  he  prepared,  notwithstanding 
some  person  whose  authority  does  not  appear,  had  endorsed 
upon  the  reissue  file  "Old  drg.  to  he  used"  and  the  examiner 
had  not  required  a  new  drawing.  (Nov.  G,  1S99. ) 
Greeley,  A.  C]      Ex  parte  Boutell,  G8  MS.  Dec.  87. 

7.  Where  a  drawing,  although  informal,  was  admitted  for  the 
purpose  of  examination.  Held  that  the  requirement  tliat  the  ob- 
jections thereto  be  removed  before  an  appeal  is  taken,  was  im- 
proper and  should  not  have  been  insisted  upon.  Rule  54  ])ro- 
vides  for  the  admission  of  such  a  drawing,  and  means  that  it 
need  not  be  corrected  until  the  case  is  ready  for  issue.  Rule 
134  was  not  intended  to  and  does  not  in  fact  nullify  this  ])ro- 
vision.     (Dec.  7,  1899.) 

Greeley,  A.  C]      Ex  parte  Cathrae,  68  MS.  Dec.  259. 

8.  The  drawing  should  show  the  entire  thing  described  in  the 
specification  as  constituting  the  invention  and  not  merely  a  sec- 
tion thereof.      (Nov.  25,  1898.) 

Greeley,  A.  C]     Ex  parte  Le  Febvre,  86  0.  G.  995. 

VIII.  Drawings. 

(1))  Order  in  Relation  to  Dravjings  and  Blue-Prints. 

Erasures  and  alterations  in  drawings  forming  part  of  applica- 
tions will  not  be  permitted,  except  as  herein  provided. 

No  alteration  will  be  permitted  in  a  drawing  forming  any  part 
of  an  application  by  an  applicant,  or  any  person  acting  for  him, 
except  where  a  blue-print  or  other  photographic  copy  has  been 
filed  in  the  case.  When,  however,  the  examiner  makes  a  re- 
quirement for  a  change  in  the  original  drawing  and  no  blue- 
print or  other  copy  has  been  furnished  by  the  applicant,  tlie 
Office  will  make  such  copy  without  charge,  and  thereupon  the 
required  alteration  may  be  made  by  the  applicant,  under  the 
direction  of  the  examiner,  subject  to  liis  approval;  or,  u])on 
request,  it  will  be  made  by  the  Office  at  the  exjiense  of  the 
applicant. 

Requirements  of  the  Office  for  alterations  in  original  di'awings 
will  be  made  in  writing,  and  the  aiiplicant's  response  must  also 
be  in  writing.     The  copy  of  the  drawing,  the  requirement  to 


44  APPLICATIONS. 

alter,  and  the  applicant's  response  will  form  part  of  the  record 
in  the  case. 

Alterations  in  drawings  cannot  be  made  in  the  Attorneys' 
Room,  except  upon  written  permission  of  the  examiner  in 
charge  of  the  application. 

Action  on  the  merits  by  the  Office  will  not  l)e  suspended 
pending  the  change  of  a  drawing,  if  the  invention  claimed  may 
be  understood  by  the  examiner. 

Applicants  are  requested  to  furnish  with  their  originals  a 
blue-print  or  other  photographic  copy  of  all  drawings  forming 
part  of  an  application,  and  when  this  is  done  such  copy  shall 
be  made  a  jDermanent  part  of  the  record  in  the  case;  or,  upon 
the  request  of  applicants,  the  Office  will  make  blue-prints  for 
five  cents  a  sheet. 

In  appeal  cases  and  upon  the  declaration  of  an  interference,  a 
blue-print  or  other  copy  of  the  drawings  will  be  sent  forward 
with  the  files,  the  examiner  retaining  the  original  drawing  until 
the  day  of  hearing. 

Applicants  may  inspect  their  drawings  in  the  Attorneys' 
Room  before  blue-prints  are  filed. 

Violation  of  the  requirements  and  provisions  of  this  order 
will  be  considered  ground  for  disbarment. 

Orders  No.  986,  of  January  25,  1S94,  and  No.  1,134,  of  June 
5,  1897,  are  hereby  revoked.  86  0.  G.  1. 

IX.   Examination  of. 

(a)   Information  and  Advice  to  Ajiplkauta. 

1.  Where  the  Office  letter  stated  "  It  is  thought  that  the  case 
could  be  materially  aljridged  with  a  great  gain  in  clearness  and 
without  unduly  restricting  the  scope  of  tlie  invention,"  Held 
the  sentence  was  too  general  in  its  character,  and  did  not  give 
the  applicant  such  full  information  as  would  enable  him  to 
overcome  the  examiner's  objections.  Applicant  is  entitled  to 
have  pointed  out  to  him  wherein  "  the  case  could  be  materially 
abridged"  so  as  to  make  it  more  clear,  and  such  information 
should  be  given  in  a  supplementary  letter.      (Sept.  8,  1899.) 

Greeley,  A.  C]     Ex  parte  Daniel,  67  MS.  Dec.  1899. 

2.  Where  a  petition  contained  numerous  requests  for  general 
instructions  to  the  examiner  as  to  his  duty  in  acting  upon  ap- 


APPLICATIONS.  45 

plications,  and  did  not  ask  for  specific  relief  from  any  particular 
action  taken,  Held  that  general  or  moot  (piestions  of  tliis  kind 
cannot  be  properly  brought  up  on  ])etition  and  will  not  l)e  ruled 
upon.  If  an  applicant  is  dissatisfied  with  any  specific  action 
by  an  examiner  he  may  have  that  action  reviewed  on  petition, 
but  the  Office  will  not  answer  hypothetical  questions  merely 
because  they  are  presented  by  an  apjilicant.  (Sept.  6,  18i)9. ) 
Geeeley,  x\.  C]      Ex  parte  Laperle  &  Boulard,  67  MS.  Dec.  429. 

3.  There  is  no  authority  for  the  statement  by  the  examiner 
that  "  he  will  not  again  consider  the  case  until  duplicate  claims 
are  cancelled  and  each  claim  is  made  distinguishable  from  every 
other,"  since  it  is  contrary  to  the  settled  practice  of  the  Office  to 
refuse  to  act  upon  a  case  of  this  kind.  The  mere  presence  of 
claims  which  the  examiner  regards  as  equivalents  is  no  good 
reason  for  refusing  to  act  on  the  case,  particularly  when  the 
applicant  has  never  been  informed  as  to  which  claims  were 
regarded  as  equivalents.  Id. 

4.  In  such  a  case  each  claim  should  be  treated  fully  as  to  its 
merits  and  the  applicant  should  be  clearly  and  specifically  in- 
formed as  to  which  claims  are  regarded  as  duplicates,  and  the 
reasons  upon  which  the  action  is  based  should  be  fully  and 
clearly  set  forth.  Id. 

5.  Where  an  examiner  failed  to  state  specifically  that  such 
claims  as  were  not  rejected  were  allowable,  Held,  that  that  is 
the  natural  and  obvious  inference  from  his  action,  since  it  is  a 
well  recognized  practice  with  some  examiners  to  mention  only 
the  claims  that  are  rejected,  and  omit  all  reference  to  those  that 
are  regarded  as  allowable.     (Nov.  3,  1899.) 

Greeley,  A.  C.]     Ex  jmrte  Hunter,  68  MS.  Dec.  111. 

6.  It  would  be  better  practice  for  the  examiner  to  mention 
each  claim  and  state  whether  or  not  it  is  allowable,  but  in  view 
of  the  recognized  custom,  his  failure  to  do  so  in  a  particular  case 
is  not  such  irregularity  as  to  render  his  action  of  no  effect.   Id. 

7.  Where  an  applicant  was,  after  the  first  action  in  the  case, 
aware  of  the  references  relied  on  by  the  examiner,  but  not  aware 
of  the  reasons  why  he  regarded  those  references  as  anticipations 
until  apprised  of  them  in  the  letter  giving  a  final  rejection. 
Held,  that  the  final  action  was  premature,  as  the  applicant  had 


46  APPLICATIONS. 

not   been    furnished   witli    the    full    inforniation   which    Avould 
enal^le  him  to  intelligently  amend  the  claims  so  as  to  meet  the 
examiner's  views  and  avoid  the  references.      (Nov.  11,  1899.) 
Greeley,  A.  C]     Ex  parte  ^^'aring,  68  MS.  Dee.  170. 

8.  An  a})plicant  is  entitled  to  fully  understand  the  examiner's 
position  while  he  has  the  right  of  ajnendment,  and  not  merely 
after  the  prosecution  before  the  examiner  is  closed.  The  right 
of  amendment  is  more  important  than  the  right  of  appeal,  and 
it  is  essential  that  the  applicant  and  the  examiner  understand 
each  other's  position  before  the  right  of  amendment  is  lost.    Id. 

9.  Where  the  examiner  rejected  claims  on  references  showing 
different  features  of  the  matter  claimed,  and  gave  little  explana- 
tion of  his  reasons  for  rejection,  and  it  was  apparent  from  the 
correspondence  that  the  applicant  did  not  understand  the  exam- 
iner's position  in  rejecting  the  claim.  Held,  that  the  examiner's 
action  was  not  as  full  as  should  have  been.  (Ex  ixirte  Barnes, 
80  0.  G.  2038,  cited.)     (Mar.  15,  1899.) 

Gkeeley,  a.  C.  )     Exparle  Perkins,  88  0.  G.  945. 

IX.   Examination  of. 
(h)   Rejection. 

1.  Where  in  giving  a  final  rejection  the  examiner  cited  cer- 
tain decisions  in  support  of  his  position.  Held  that  this  was  not 
a  new  reason  for  rejection  and  therefore  did  not  reopen  the  case 
for  further  amendment.  The  tribunals  of  the  Office,  like  the 
courts,  take  judicial  notice  of  decisions  which  have  been  ren- 
dered, and  may  properly  cite  them  at  any  and  all  stages  in  the 
prosecution  of  an  application.      (Feb.  16,  1899.) 

Gkeeley,  A.  C]      Ex  parte  Telfer,  66  MS.  Dec.  286. 

2.  It  is  well  settled  that  claims  in  an  application  may  properly 
under  certain  circumstances  be  rejected  on  a  patent  granted  to 
the  same  party  on  a  copending  application.  (Ex  parte  Mullen  & 
Mullen,  50  0.  G.  837.)     (Nov.  8,  1898.) 

Greeley,  A.  C.]     Ex  parte  Wellman,  86  0.  G.  1986. 

8.  Since  mere  disclosure  in  a  patent  of  matter  properly  divis- 
ible from  the  invention  claimed  is  no  bar  to  the  allowance  of 
claims  to  that  matter  if  presented  in  a  copending  application, 
the  examiner  should,  if  he  insists  upon  a  rejection  of  the  claims, 


APPLICATIONS.  47 

point  out  more  fully  the  reasons  therefor.  Rule  92  does  not 
prevent  tlie  allowance  of  claims  coming  under  the  second  class 
of  cases  mentioned  in  ex  parte  Mullen  &  iMullen.  Id. 

4.  Claims  for  an  alleged  eoml)inati()n  may  properly  be  rejected 
on  references  none  of  which  shows  the  coml^ination,  hut  which 
show  the  elements  to  be  old,  if  it  is  clear  that  by  assembling  the 
elements  in  one  structure  no  new  effect  different  from  the  sum 
of  the  effects  of  the  separate  elements  is  secured.  (June  1, 
1899.) 

Greeley,  A.  C]      Ex  parte  Perkins,  <S8  0.  G.  548. 

5.  The  applicant's  request  for  reconsideration  of  one  claim 
while  other  claims  were  under  rejection,  was  properly  construed 
as  applying  to  the  entire  case,  for  otherwise  it  would  not  be  a 
proper  request  and  could  not  be  granted.      (Apr,  29,  1899.) 
Greeley,  A.  C]     Ex  parte  i^tehh'ms,  88  0.  G.  1335. 

6.  If  applicants  were  permitted  to  prosecute  each  claim  separ- 
ately to  a  conclusion  before  taking  action  in  reference  to  other 
claims  in  the  same  case,  it  would  be  practically  impossible  for 
the  Office  to  bring  the  prosecution  of  any  case  to  a  conclusion. 
Such  piecemeal  action  has  not  been  and  cannot  be  permitted. 

Id. 

7.  Where  the  examiner  in  his  first  action  rejected  claim  1  on 
a  British  patent  and  claim  3  on  a  United  States  patent,  and  in 
his  second  action  gave  reasons  for  refusing  the  claims  which  did 
not  appear  in  the  first  action,  viz.,  that  there  is  no  invention  in 
making  an  ordinary'  diaphragm  with  a  serrated  edge  and  that 
the  combination  recited  in  claim  3  lacks  invention,  in  view  of 
the  British  patent,  taken  in  connection  with  the  United  States 
patent.  Held  that  new  reasons  for  refusing  the  claim  having  been 
given  the  application  was  not  under  final  rejection,  under  the 
rules  and  practice  of  the  Office,  and  the  amendment  presented 
after  the  second  action  on  the  case  should  be  admitted.  (Oct. 
2,  1899.) 

DuELL,  C]      Exjxirfe  Valiquet,  8<)  0.  G.  354. 

IX.  Examination  of. 

(c)  Actions  Other  than  Rejection. 
1.   A  model  is  only  necessary  as  an  alternative  of  failure  to 
properly  describe  an  invention,    and  this  defect  can  often  l)e 


48  APPLICATIONS. 

removed  by  compliance  with  objections  definitely  stated  by  the 
examiner.     (Nov.  25,  1898.) 

Greeley,  A.  C]     Ex  jxirte  Isenhart,  87  0.  G.  179. 

2.  An  examiner  in  making  the  objection  of  inoperativeness 
should  point  out  the  particulars  in  respect  to  which  the  device 
objected  to  is  inoperative,  if  there  l)e  any  such.  Id. 

X.  Fees. 

Order. 

Department  of  the  Interior, 

United  States  Patent  Office, 

Washington,  D.  C,  November  23,  1898. 
The  attention  of  all  those  who  purchase  certificates  of  deposit 
to  be  sent  to  this  Office  is  called  to  the  following  regulation, 
which  was  made  by  the  United  States  Treasury  Department 
and  is  still  in  force: 

Hereafter  all  certificates  of  deposit  issued  for  patent  fees  must 
state  on  their  face  the  name  and  address  of  the  person  on  whose 
behalf  the  deposit  is  made,  (the  name  of  the  attorney  not  being 
sufficient,)  and  the  particular  invention,  improvement,  or  object 
to  which  their  amounts  are  to  be  applied. 

Unless  this  information  accompanies  each  deposit  of  this  kind 
the  deposit  should  be  refused. 

C.  H.  DUELL,  Commissioner. 
86  0.  G.  1327. 

XL  Forfeited. 

Reneival  of. 
Where  an  application  had  been  once  forfeited  and  renewed, 
and  became  forfeited  a  second  time  for  non-payment  of  the 
final  fee  within  the  prescribed  six  months,  and  more  than  tw6 
years  had  elapsed  since  the  date  of  allowance  in  the  first  in- 
stance. Held,  that  no  renewal  could  now  be  allowed  or  permitted. 
The  only  recourse  now  open  to  applicant  is  the  filing  of  an 
entirely  new  and  separate  application,  provided,  of  course,  that 
his  invention  has  not  been  patented  or  described  in  any  printed 
publication  in  this  or  any  foreign  country  for  more  than  two 
3'ears  prior  to  his  application,  and  not  in  public  use  or  on  sale 
in  this  country  for  such  length  of  time.  (Aug.  17,  1899.) 
Greeley,  A.  C]     Ex  parte  Kellow,  67  MS.  Dec.  377. 


APPLICATIONS.  49 

XII.  :Model. 

It  is  within  the  examiner's  discretion  to  permit  a  drawing  of 
a  model  or  structure  or  a  copy  of  an  ori<rinal  (h-awing  to  be 
filed;  but  whenever  required  the  original  model,  structure,  or 
drawing  should  be  produced  for  the  inspection  of  the  Ofllice, 
with  leave  to  the  applicant  to  withdraw  the  same  after  it  has 
served  the  purpose  for  which  it  was  produced.  In  case  of 
withdrawal  a  drawing  of  the  original  should  be  filed.  (Oct. 
27,  1899.) 
DuELL,  C]      Ex  parte  Johnson,  89  0.  G.  1841. 

XIII.  Names  of  Applicants. 

Order. 
When  the  full  first  name  of  the  applicant  does  not  appear 
either  in  his  signature  or  in  the  preamble  to  the  specification, 
the  examiner  will,  in  his  first  official  letter,  require  an  amend- 
ment supplying  the  omission,  and  he  will  not  pass  the  applica- 
tion to  issue  until  the  omission  has  been  supplied,  unless  an 
affidavit  shall  have  been  filed  setting  forth  that  the  full  first 
name  of  the  applicant  is  the  one  originally  given  by  him. 
86  0.  G.  350. 

XIV.  Oath. 

(a)  New  or  Renewed. 

1.  Where  aj^plicant  filed  a  new  oath  in  compliance  with  the 
requirement  of  the  examiner  and  said  oath  referred  to  "the 
annexed  specification"  and  no  such  specification  accompanied 
the  oath,  but  the  oath  was  intended  to  apply  to  an  application 
already  on  file,  Held  that  the  oath  did  not  properly  identify  the 
application  by  serial  number  and  date  of  filing  and  that  a  new 
oath  should  be  furnished  proj^erly  identifying  the  application 
to  which  it  is  to  be  applied.      (June  3,  1899.) 

DuELL,  C]     Ex  parte  Heusch,  88  0.  G.  1703. 

2.  As  rules  10  and  32  of  the  Rules  of  Practice  require  that  a 
letter  concerning  an  application  must  properly  identify  the  ap- 
plication, and  that  when  all  parts  of  an  apj)lication  are  not  filed 
together  a  letter  should  accompany  each  part  accurately  and 
clearly  connecting  it  with  the  other  parts  of  the  application, 

4 


50  APPLICATIONS. 

Held  that  tliese  rules  apply  to  an  oath  as  well  as  to  any  other 
papers  relating  to  an  application.  Id. 

XIV.  Oath. 

(6)  Sujyplemental. 

1.  ^^'hel•e  an  examiner  held  that  certain  claims  in  an  amend- 
ment covered  new  matter  and  required  a  supplemental  oath, 
and  stated  that  when  such  oath  had  been  supplied  the  claims 
Avould  be  rejected  as  covering  new  matter,  Held,  that  if  these 
claims  introduced  new  matter  into  the  case  they  could  not  be 
supported  by  any  oath,  but  should  be  rejected  on  the  ground  of 
new  matter  without  requiring  a  new  oath,  so  that  an  oppor- 
tunity could  be  afforded  for  appeal  to  the  various  tribunals  on 
the  ground  of  rejection.     (Mar.  25,  1899.) 

DuELL,  C]     Ex  parte  Marsh,  66  MS.  Dec.  416. 

2.  Where  the  question  as  to  whether  or  not  a  claim  was  for 
matter  substantially  embraced  in  the  statement  of  invention  or 
claim  originally  presented  is  not  free  from  doubt,  under  the 
particular  circumstances  of  the  case,  the  doubt  should  be  re- 
solved in  favor  of  the  petitioner.      (Oct.  20,  1899.) 

DuELL,  C]     Ex  parte  Marsh,  68  MS.  Dec.  67. 

3.  When  a  reputable  attorney  makes  the  statement  "that  if 
it  were  possible  to  obtain  a  supplemental  oath  from  the  appli- 
cant, such  a  course  would  have  been  pursued;  but  the  appli- 
cant has  refused  to  make  such  affidavit  as  well  as  to  execute  an 
application  which  was  intended  to  be  filed  in  lieu  of  the  present 
application,"  the  Office  should  accept  that  statement  and  not 
allow  itself  to  be  made  a  party  to  a  "hold-up."  Id. 

XIV.   Oath. 

(c)  In  Foreign  Countries.  Order. 
It  is  hereby  directed  that  oaths  accompanying  applications 
for  patents  made  within  the  following-named  foreign  countries 
must  be  taken  before  a  minister,  charg^  d'affaires,  consul,  or 
commercial  agent  holding  commission  under  the  Government  of 
the  United  States: 


Austria-Hungary. 
Argentine  Republic. 
Belgium. 


Brazil. 
Costa  Rica. 
Denmark. 


APPLICATIONS.  51 

Haiti.  Portugal.    . 

Honduras.  Russia. 

Italy.  San  Salvador. 

Mexico.  Servia. 

Netherlands.  Sweden. 

Norway.  Switzerland. 
Peru. 
Applications  filed  in  this  Office  presenting  oatlis  not  executed 

in  compliance  with  this  order  will  be  treated  as  incomplete. 

XV.  Pp:nding. 

Access  to. 

Order  No.  1,271. 
Department  of  the  Interior, 

United  States  Patent  Office, 

Washington^  D.  G,  March  27,  1899. 
Hereafter  no  person  except  the  applicant,  the  assignee  whose 
assignment  is  of  record,  or  the  attorney  of  record  will  be  per- 
mitted to  have  access  to  the  file  of  any  application,  except  as 
provided  for  under  the  interference  rules,  unless  written  author- 
ity from  the  applicant,  assignee,  or  attorney,  identifying  the 
application  to  be  inspected,  is  filed  in  the  case  to  become  a  part 
of  the  record  thereof,  or  upon  the  written  order  of  the  Conmiis- 
sioner,  which  will  also  become  a  part  of  the  record  of  the  case. 

C.  H.  DUELL,  Commissioner. 

XVI.  Petition. 

It  is  possible  that  the  name  of  the  town  and  county,  wherein 
an  applicant  resides,  given  in  the  petition,  is  also  his  complete 
postoffice  address;  but  under  the  rule  (33)  that  fact,  if  it  is 
true,  must  appear  positively  from  the  petition  itself  and  not 
left  to  conjecture.  (Dec.  7,  1899.) 
Greeley,  A.  C]     Ex  jmrte  Caihrne,  68  MS.  Dec.  259. 

XVII.  Public  Use  Proceedings. 

1.  Rule  130  provides  that  amendments  to  the  specification 
will  not  be  received  during  the  pendencj'  of  an  interference  ex- 
cept as  provided  in  rules  106,  107  and  109;  this  rule  is  equally 
applicable  to  a  proceeding  to  determine  the  question  of  public 
use.  (July  27,  1899.) 
Greeley,  A.  C]     Ex-jxirte  France,  67  MS.  Dec.  324. 


52  APPLICATIONS. 

2.  Applicant's  claims  were  finally  rejected  as  a  result  of  a 
public  use  proceeding,  and  his  right  of  ai)peal  existed  and 
therefore  the  question  of  public  use  had  not  been  finally  deter- 
mined. No  amendment  of  the  application  involved  in  such  a 
proceeding  is  legitimate  or  proper  until  such  question  is  finally 
disposed  of,  and  applicant  should  await  such  final  disposition 
before  attempting  to  amend.  Id. 

3.  A  protest  was  filed  against  the  grant  of  a  patent  to  D.  on 
the  ground  that  the  invention  had  been  in  public  use  for  more 
than  two  years  prior  to  the  filing  of  D.'s  application.  M.,  who 
claimed  the  same  invention,  was  put  in  interference  with  D., 
and  his  assignee  was  permitted  to  take  part  in  the  interference 
proceeding.  A  copy  of  M.'s  application  was  obtained  by  pro- 
testants  against  the  wish  of  M.  Held,  that  it  is  not  necessary 
for  the  conduct  of  public  use  proceedings  that  the  protestants 
should  have  a  copy  of  M.'s  application,  and  the  copy  obtained 
by  them  should  be  returned  to  the  Office.  (Oct.  9,  1899.) 
DuELL,  C]     //(,  re  Nat'l  Phonograph  Co.,  89  0.  G.  1669. 

4.  Held,  further,  that  as  protestants  have  filed  affidavits 
alleging  that  certain  machines  had  been  made  and  were  in  pub- 
lic use,  it  is  incumbent  upon  them  to  prove  their  allegations  by 
proper  evidence.  When  this  evidence  is  before  the  Office,  it 
will  judge  whether  the  machines  were  in  public  use  at  the  time 
alleged,  and  whether  the  evidence  is  sufficient  to  ])revent  the 
grant  of  a  patent.  Id. 

Held,  further,  that  as  M.'s  assignee  has  been  made  a  party  to 
the  public  use  proceeding  at  its  request  and  has  the  right  to 
cross-examine  the  witnesses  produced  on  behalf  of  protestants, 
the  evidence  may  be  used  against  M.  in  the  consideration  of  his 
application  on  the  question  of  patentability.  Id. 

XVIII.   Reissue. 

JVew  Matter. 
It  is  well  recognized  in  the  practice  of  the  Office  and  in  the 
courts  that  the  question  whether  or  not  matter  sought  to  be 
introduced  into  a  pending  application  is  to  be  refused  as  new 
matter  is  quite  a  different  question  from  the  question  whether 
or  not  such  matter  may  be  introduced  in  a  reissue  application. 
So  long  as  an  application  is   pending   before  this    Office  the 


APPLICATIONS.  53 

applicant  may  be  permitted  to  amend  in  tlie  direction  of  l)road- 
ening  the  statement  of  his  invention,  i)rovided  he  does  not 
change  the  invention  on  which  that  statement  is  based.  In 
other  Avords,  if  liis  specification  and  claims  as  originally  filed  do 
not  adequately  express  the  full  breadth  of  the  invention  which 
he  has  disclosed,  he  may  amend  in  such  a  Avay  as  to  secure  full 
protection.  When  a  patent  has  issued,  the  specification  and 
claims  are  no  longer  o])en,  as  a  matter  of  course,  to  the  same 
amendments  which  could  have  been  made  before  issue.  The 
burden  of  proof  is  then  upon  tlie  patentee  who  seeks  to  amend 
by  an  application  for  reissue  to  show  not  only  that  the  amend- 
ment desired  is  necessary  to  the  protection  of  his  rights,  but  to 
show  also  satisfactory  reasons  why  the  amendment  was  not 
made  before  issuance  of  the  patent.  This  is  because  other 
questions  are  to  be  decided  and  other  surrounding  circumstances 
are  to  be  considered  in  passing  upon  an  amendnient  in  a  reissue 
application.  (.Jan.  6,  1891).) 
Geeeley,  a.  C]     Ex  imrte  Holhs,  86  0.  G.  489. 

XIX.  Specification. 

(a)  //(  General. 
It  is  the  policy  of  the  Office  to  permit  an  applicant  in  de- 
scribing his  invention  to  select  his  own  terms  of  reference  so 
long  as  their  use  does  not  lead  to  ambiguity.      (Jan.  6,  1899.) 
Geeeley,  A.  C]     Ex  parte  Mollis,  86  0.  G.  489. 

XIX.  Specification. 

(h)  Sufficiency  of  Description. 
1.  Where,  in  describing  and  illustrating  an  electrical  inven- 
tion, the  specification  was  in  general  terms,  and  conventional 
forms  were  used  such  as  are  employed  to  a  great  extent  in  illus- 
trating electrical  inventions.  Held  that  for  these  reasons  the 
application  does  not  disclose  an  inoperative  device,  though 
lacking  in  mechanical  detail.  To  hold  that  an  application  is 
insufficient  because  of  the  use  of  such  forms  and  general  de- 
scription, would  upset  the  practice  of  the  Office  and  necessitate 
the  rejection  of  a  great  number  of  applications  now  on  file  and 
accepted  as  reduction  to  practice  of  the  invention  disclosed, 
(Mar.  8,  1899.) 

DuELL,  C]     Brown  v,  Hoopes,  66  IMS.  Dec.  875. 


54  APPLICATIONS. 

2.  It  is  the  policy  of  the  Office  to  permit  an  appHcant  to 
select  his  own  terms  of  reference  in  describing  his  invention  so 
long  as  their  use  does  not  lead  to  confusion  and  uncertainty. 
(Apr.  10,  1899.) 

Greeley,  A.  C]     Ex  parte  AveveW,  66  MS.  Dec.  442. 

3.  Where  an  application  bore  evidence  of  having  been  drawn 
abroad  without  that  realization  of  the  requirements  of  this  Office 
which  is  reasonably  expected  of  attorneys  practicing  before  this 
Office,  and  it  is  obvious  that  it  needed  a  very  full  and  careful 
revision,  it  is  proper  to  grant  the  rec^uest  of  the  applicant  that 
the  examiner  cite  such  references  as  are  at  his  immediate  com- 
mand to  aid  applicant  to  properly  restrict  the  application,  as  a 
compliance  with  the  request  might  materially  facilitate  the 
progress  of  the  application.      (Aug.  19,  1899. ) 

Greeley,  A.  C]     Ex  parte  Theisen,  67  MS.  Dec.  388. 

4.  Section  4888  of  the  Revised  Statutes  and  Rule  34  require 
that  specifications  state  the  manner  of  using  the  invention  ;  but 
in  the  present  case  this  has  been  done  within  the  meaning  of  the 
statute  and  the  rule.  The  purpose  of  this  requirement  is  that 
upon  reading  the  patent  others  will  clearly  understand  the  in- 
vention, and  the  manner  of  using  it.  The  rod-coupling  shown 
in  this  case  is  obviously  adapted  for  use  wherever  it  is  desired  to 
connect  two  sections  of  a  rod,  and  neither  the  wording  nor  the 
spirit  of  the  rule  requires  that  the  use  to  which  the  rod  is  to  be 
put  should  be  stated.  The  purpose  and  use  of  the  coupling  pin 
are  the  same  in  whatever  apparatus  and  for  whatever  purposes 
the  rod  is  used.      (Aug.  28,  1899.) 

Greeley,  A.  C]     Xi- parte  Hinkle  and  Ashmore,  88  0.  G.  2410. 

XX.  Suspension  of  Action  on. 

1.  Where  the  examiner  suspended  action  on  an  application 
until  the  termination  of  an  interference  in  which  an  earlier  case 
is  involved,  of  which  tlie  one  under  consideration  is  a  division, 
and  which  the  examiner  states  contains  the  same  claims  as 
the  earlier  application,  Held^  that  proceedings  should  not  be 
suspended  and  the  application  indefinitely  delayed,  but  the 
applicant  should  at  the  present  time  be  permitted  to  contest  the 


APPLICATIONS.  55 

matter  by  siicli  action  as  tlie  condition   of  the  case  requires. 

(May  3,  1899. ) 

Greeley,  A.  C]     Ex  parte  Bullier,  88  0.  G.  1161. 

2.  If  the  claims  in  the  i)resent  application  are  the  same  as  the 
issue  of  the  interference,  or  cover  the  same  invention  as  the 
application  of  the  other  party  to  the  interference,  it  is  clear  t])at 
the  applicant's  right  to  the  claims  cannot  l)c  determined  until 
the  decision  on  the  question  of  priority,  but  the  possibility  that 
the  examiner  may  be  mistaken  in  holding  that  the  claims  in  this 
case  are  not  patentable  over  the  invention  disclosed  by  the  other 
party  to  the  interference  must  be  contemplated  just  as  the  rules 
providing  for  appeals  contemplate  the  possibility  of  mistake  in 
rejecting  claims  on  references,  and  the  applicant  should  be  per- 
mitted to  contest  the  question  at  the  present  time  instead  of 
■waiting  until  the  interference  is  decided.  /(/. 

3.  The  question  to  be  determined  is  of  the  same  kind  as  if  the 
decision  had  been  rendered  against  the  applicant  in  the  inter- 
ference, and  it  would  be  unjust  to  him  to  cause  him  the  delay 
when  the  matter  can  be  settled  at  the  present  time.  Id. 

4.  It  is  contrary  to  the  well-settled  policy  of  the  Office  to  sus- 
pend action  on  an  application  unless  such  suspension  is  abso- 
lutely necessary  to  determine  the  right  of  an  applicant  to  a 
patent  on  that  application.  As  pointed  out  in  ex  parte  Draw- 
baugh  (64  0.  G.  155),  action  on  one  of  several  divisional  cases 
should  not  be  suspended  to  await  the  allowance  of  another 
application.  Id. 

XXI.   By  Admixistrator  of  Deceased  Inventor. 

1.  Where  an  application  was  filed  by  a  party  as  an  adminis- 
trator of  the  estate  of  a  deceased  person,  unaccomiianicd  by 
letters  of  administration  duly  taken  out  in  the  United  States, 
Held,  that  said  application  has  no  standing  in  the  Patent  Office. 
{Ex  parte  Ransome,  C.  D.  1870,  143,  cited.)     (Mar.  3,  1899.) 

DuELL,  C]      Ex  parte  Langen,  87  O.  G.  697. 

2.  The  fact  that  such  an  ajiplication  had  been  given  a  serial 
num])er,  and  that  oral  instructions  had  been  given  to  forward 
it  for  examination,  does  not  make  it  a  legal  ajiplication  or  re- 
lieve the  applicant  or  his  attorney  from  the  responsibility  of 
filing  an  ai)i)lication  by  an  administrator  duly  appointed  in  this 


56  ASSIGNMENT. 

country,  so  as  not  to  be  affected  by  tbe  statute  which  prohibits 
the  grant  of  a  patent  in  this  country  when  a  foreign  patent  had 
been  obtained  on  an  application  filed  more  than  seven  months 
prior  to  the  filing  of  the  application  in  this  country.  Id. 

3.  As  said  application  has  no  standing,  an  administrator  ap- 
pointed in  tliis  country  after  the  application  is  filed  cannot  be 
substituted  for  the  present  applicant  or  be  permitted  to  sign  the 
application  nunc  pro  tunc,  as  the  application  would  then  lack  the 
oath  of  the  proper  administrator,  and  would  not  be  a  complete 
application  until  such  oath  was  filed.  Id. 

XXII.  Joint  and  Sole. 

1.  Where  each  of  two  joint  inventors  files  a  petition,  specifica- 
tion, and  oath  separately  signed  and  executed  by  him,  the 
specifications  being  duplicates  and  the  papers  reciting  the  fact 
that  the  parties  are  joint  inventors,  Held,  that  they  constitute  a 
valid  application  under  the  law,  and  that  it  is  not  necessary  to 
file  a  new  petition,  specification,  and  oath  signed  by  both 
parties.     (Aug.  14,  1899.) 

Geeeley,  a.  C]      Ex  parte  Wellman  et  cd.,  88  0.  G.  2065. 

2.  Where  duplicate  specifications  have  been  filed  by  joint  in- 
ventors, the  attorney  for  the  applicants  should  for  the  conven- 
ience of  the  Office  substitute  by  amendment  a  single  copy  of  the 
specification  for  the  two  on  file,  so  as  to  prevent  confusion  in 
the  entry  of  amendments  and  the  printing  of  the  patent.     Id. 

Assignment. 

I.   In  General. 
II.  Of  Future  Improvements. 
I.  In  General. 

1.  Where  an  instrument,  purporting  to  be  an  assignment, 
was  clearly  nothing  more  than  an  executory  contract;  did  not 
convey  the  legal  title  to  the  invention,  but  was  merely  an  agree- 
ment to  transfer  the  patent  to  be  granted  upon  the  performance 
of  certain  conditions  specified;  and  was  not  such  an  assignment 
as  the  Office  could  recognize.  Held,  that  in  an  interference  pro- 
ceeding it  was  not  necessary  that  a  concession  of  priority  made 
by  the  alleged  assignor  be  signed  by  the  alleged  assignee. 
(Apr.  25,  1899.) 
Greeley,  A.  C.]     Bates  v.  Johnson,  66  MS.  Dec.  477. 


ASSIGNMENT.  57 

2.  A  patent  right  is  an  incorporeal  kind  of  personal  property 
and  in  a  certain  sense  analogous  to  property  in  a  share  of  stock. 
The  discoverer  of  a  new  and  useful  improvement  is  vested  hy 
law  with  an  inchoate  right  to  its  exclusive  use  which  he  may 
perfect  and  make  absolute  hy  securing  a  patent  from  \hv  gov- 
ernment in  the  manner  provided  l\y  law.  This  right  tlie  in- 
ventor may,  under  the  law,  assign  before  the  patent  is  issued, 
and  request  that  the  patent  be  issued  to  the  assignee.  When 
the  patent  is  issued,  an  exclusive  right  to  the  invention  for  the 
statutory  period  has  been  created  and  vested  in  the  assignee. 
(C.  C,  N.  D.  Cal.     May  22,  1899.) 

Morrow,  J.]     *  Fruit-Cleaning  Co.   v.   Fresno  Home-Packing 
Co.  etciL,  94  Fed.  Rep.  845. 

3.  An  oral  agreement  for  the  sale  or  assignment  of  the  right 
to  obtain  a  patent  is  not  invalid;  if  sufficiently  proved  it  can 
be  specifically  enforced  in  equity.  */<:?. 

4.  It  is  common  knowledge  that  a  partnership  may  acquire 
the  title  to  an  invention  in  the  name  of  the  partnership  after 
the  patent  has  issued,  and  there  does  not  appear  to  be  any 
good  reason  why  it  may  not  do  so  before  the  patent  is  issued. 
The  gi-ant  in  the  patent  does  not  change  the  character  of  the 
property,  and  under  the  law  a  patent  is  not  void  because  the 
grant  of  an  exclusive  right  has  been  made  to  a  co-partner- 
ship. */(/. 

II.  Of  Future  Improvements. 

Where  an  employe  of  a  manufacturing  company  granted  to 
the  company  "all  the  patents,  inventions  and  improvements 
by  him,"  now  existing  and  used  by  "the  company"  in  the 
manufacture  and  sale  "of  certain  machinery;"  also  "all  in- 
ventions and  improvements  in  said  machiner}^  made  by  "  him; 
also  "all  new  designs  of  such  machinery  hereafter  made  l)y" 
him;  also  "all  inventions  and  improvements  hereafter  made 
by"  him,  "in  the  machinery  covered  by  such  new  designs. " 
Held,  that  the  "inventions  and  improvements"  of  the  st'cond 
clause  were  to  pass  by  the  grant,  even  though  made  after  the 
grantor  left  the  company's  emplo}';  Held  further  that  tlie  "  new 
designs"  of  the  third  clause,  and  "inventions  and  improve- 
ments" of  the  fourth  clause  passed  while  the  employment  con- 


58  COMITY. 

tinned  (but  were  impliedl}'  reserved  if  they  were  made  after  the 
employment  ceased),  unless  the  "new  designs"  were  so  di- 
vergent from  the  "  machinery  "  in  question,  were  so  thoroughly 
typical,  and  so  different  in  plan  and  structure  as  to  be  radically 
distinctive.  (C.  C,  E.  I).  Penn.  Jan.  31,  1899.) 
Dallas,  J.]  *  Geiser  Mfg.  Co.  et  al.  v.  Frick  Co.,  92  Fed. 
Rep.  189. 

Cases  Distinguished. 

1.  In  the  case  of  Palmer  r.  ]\Ifg.  Co.,  84  Fed.  Rep.  454,  457, 
each  of  the  two  patents  involved  was  really  for  a  machine,  the 
machine  in  the  earlier  patent  merely  needing  well-known  con- 
nections to  accomplish  the  results  of  the  machine  of  the  later 
patent;  so  that  the  two  patents  were  clearly  for  the  same  subject- 
matter;  but  the  case  at  bar  is  not  one  of  this  kind,  as  Simonds' 
earlier  patent  was  clearly  for  a  mechanism,  and  the  later  one 
clearly  for  an  art.  (C.  C.,  D.  Me.  July  30,  1898.)  ' 
Putnam,  J.]     -"^ Simonds  Rolling  Mach.  Co.  v.   Hathorn  Mfg. 

Co.  etal,  90  Fed.  Rep.  201. 

2.  The  case  of  Potts  v.  Creager,  155  U.  S.  597,  15  Sup.  Ct. 
194,  70  0.  G.  494,  laid  down  no  i\ew  principles  of  law^,  neither 
did  it  overrule  any  of  the  cases  cited  in  Briggs  v.  Ice  Co.,  60 
Fed.  Rep.  87.  On  the  contrary,  it  indicates  quite  clearly  that 
the  question  of  so-called  double  use,  /.  c,  whether  the  new  use 
is  so  nearly  analogous  to  the  former  one  that  the  applicability 
of  the  device  to  its  new  use  would  occur  to  a  person  of  ordinary 
mechanical  skill,  is  one  dependent  upon  the  peculiar  facts  of 
each  case.      (C.  C.  A.,  2d  Cir.     Apr.  4,  1899.) 

Lacombe,    J.]     *Briggs  v.    Duell,    Com.    of  Patents,    93   Fed. 

Rep.  972. 
Comity. 

1.  The  circuit  court  of  appeals  and  the  circuit  court  also 
must  take  up  all  cases  Avhich  involve  the  invalidity  of  ])atents 
upon  their  merits  and  determine  them  independently  of  the 
rulings  of  other  circuits,  except  so  far  as  the  decisions  of  such 
other  circuits  are  instructive  upon  the  subject  under  considera- 
tion. (Stover  Mfg.  Co.  v.  Mast,  Foos  &  Co.,  32  C.  C.  A.  231, 
89  Fed.  Rep.  333;  Sand.  Pat.  Dig.,  1898,  51.)  (C.  C,  N.  D. 
111.  Nov,  28,  1898.) 
Grosscup,  J.]     *Ross  V.  City  of  Chicago,  91  Fed.  Rep.  265. 


COMITY.  59 

2.  Ordinarily,  it  is  proper  practice  upon  the  question  of 
granting  a  preliminary  injunction  to  accept  and  follow  the  de- 
cision of  a  circuit  court  of  appeals  of  another  circuit  sustaining 
and  construing  a  patent;  but  where  the  circumstances  are  so 
unusual  as  to  require  a  court  to  make  an  independent  investi- 
gation as  to  the  validity  and  scope  of  the  patent  and  to  deter- 
mine whether  the  rights  of  the  patent  owner  have  been  violated 
by  another  alleged  infringer,  such  decision  may  not  be  followed. 
(C.  C.  A.,  3d  Cir.     Dec.  21,  1898.) 

AcHESON,  J.]     *  Horn  &  Brannen  Mfg.  Co.  v.   Pelzer,  91   Fed. 
Rep.  665. 

3.  Where,  in  a  second  suit,  it  appears  that  12  years  after  the 
grant  of  the  patent  sued  upon,  it  was  declared  invalid  and 
shortly  thereafter  an  application  for  a  reissue  thereof  was  made, 
which  application  was  subsequently  granted,  and  further  that 
the  alleged  infringing  device  is  made  under  a  patent  antedating 
the  reissue  patents,  such  facts  raise  proper  questions  for  such 
independent  investigation  and  consideration.  -^Id. 

4.  As  a  general  rule,  and  especially  in  patent  cases,  the  de- 
cision of  a  circuit  court  of  appeals  of  one  circuit  should  be  fol- 
lowed in  another  circuit  upon  final  hearing  Avith  respect  to  the 
issues  determined,  if  based  upon  substantially  the  same  state  of 
facts,  unless  it  should  appear  that  there  was  manifest  error, 
(C.  C.  A.,  1st  Cir.     Feb.  13,  1899.) 

Colt,  J.]      Beach  r.  Hobbs  et  al,  Hobbs  et  al.  v.  Beach,  92  Fed. 
Rep.  146,  87  0.  G.  1961-. 

5.  On  a  motion  to  dissolve  a  preliminary  injunction,  when 
the  court  has  before  it  the  opinions  of  two  circuit  courts  of  ap- 
peal covering  the  question  at  issue  in  the  suit  at  bar,  in  which 
opinions  antagonistic  conclusions  are  reached,  it  ma}'  closely 
examine  the  reasoning  of  each  of  the  said  courts  and  the  grounds 
upon  which  they  arrive  at  their  respective  conclusions,  in  addi- 
tion to  the  facts  brought  out  at  the  hearing  of  the  case  at  bar, 
and  adopt  the  reasoning  of  either  of  said  courts  in  so  far  as  it 
may  impress  the  court  as  being  correct  and  applicable  to  the 
case  at  bar.  (C.  C,  N.  D.  Ills.  Apr.  13,  1899.) 
KoHLSAAT,  J.]     *  Pelzer  v.  Newhall  et  al,  93  Fed.  Rep.  684. 

6.  "Where  the  court  of  appeals  of  one  circuit  had  gone  into  the 


60  COMITY. 

claims  of  a  patent  fully  and  given  a  decision  in  regard  to  one 
claim,  which  caused  a  reissue  of  the  patent  and  the  modification 
of  that  claim,  and  later  the  same  court,  on  motion  for  prelimi- 
nary injunction,  had  held  that  claim  as  modified  by  reissue  to 
be  invalid,  while  the  court  of  appeals  of  another  circuit  had, 
upon  final  hearing,  held  the  claim  to  be  valid,  both  courts  hav- 
ing gone  equally  into  the  merits  of  the  case  as  the  basis  of  their 
respective  decisions,  Hdd.,  that  upon  a  motion  for  preliminary 
injunction  in  the  court  of  still  another  circuit,  the  case  does  not 
fall  within  the  customary  rule,  tliat  as  between  conflicting  de- 
cisions of  two  circuit  courts  of  appeals  of  other  circuits  respect- 
ing the  validity  of  a  patent,  that  one  will  be  followed  which  was 
rendered  upon  final  hearing  rather  than  one  which  was  rendered 
upon  a  preliminary  motion.  (C.  C. ,  N.  D.  111.  N.  D.  May 
23,  1899.) 
KoHLSAAT,  J.]     *Maitland  v.  Graham,  96  Fed.  Rep.  247. 

7.  A  circuit  court  of  ai)peals  is  not  in  the  least  concluded  by 
the  decision  of  a  circuit  court  of  another  circuit  upon  the  ques- 
tion of  the  validity  of  a  patent,  nor  do  considerations  of  comity 
toward  a  circuit  court  with  respect  to  its  rulings  have  the  same 
potency  with  a  circuit  court  of  appeals  as  they  may  properly 
have  with  a  circuit  court  when  confronted  with  the  alternative  of 
following  or  departing  from  the  ruling  of  another  circuit  court. 
(C.  C.  A.,  3dCir.     Oct.  4,  1899.) 

Bradford,  J.]     *McNeely  et  al.  v.  Williames  et  al. 

Williames  et  al.   v.    McNeely  et  al,   96   Fed. 
Rep.,  978. 

8.  The  circuit  courts  and  the  circuit  courts  of  appeals  through- 
out the  United  States  are  respectively  of  equal  dignity,  and  there 
is  no  reason  why,  unless  in  cases  of  clear  error  or  oversight,  each 
of  'these  courts  should  not  follow  the  rule  practiced  by  the  two 
divisions  of  the  court  of  appeal,  sitting  under  the  Enghsh  judi- 
cature acts,  to  the  effect  that  each  division  accepts  the  decisions 
of  the  other  as  of  binding  force,  thereby  avoiding  the  just  com- 
plaints, and  the  substantial  detriment  to  the  administration  of 
the  law,  which  come  from  inconsistent  proceedings  of  several 
tribunals  of  like  authority.  (C.  C,  D.  Mass.  Oct.  4,  1899.) 
Putnam,  J.]     *Duff  Mfg.  Co.  v.  Norton,  96  Fed  Rep.  986. 


CONTRACTS.  61 

Contracts. 

I.  Construction  of. 
II.  Specific  Performance. 

I.  Construction  of. 

1.  Where  each  party  to  a  contract  grants  to  the  other  a  hcense 
under  all  United  States  patents  owned  and  controlled  hy  it,  sub- 
ject to  outstanding  licenses,  but  neither  is  permitted  to  grant 
licenses  to  its  territorial  licensees  under  the  patents  of  the  other 
part}'',  though  neither  is  authorized  nor  forbidden  to  sell  to  its 
licensees  the  apparatus  covered  by  the  patents  of  the  other 
party,  and  such  sales  are  recognized,  the  contract  cannot  be 
construed  as  an  express  covenant  not  to  make  such  sales,  so  as 
to  afford  a  basis  for  a  suit  by  one  party  to  enjoin  the  other  from 
making  them,  but  it  leaves  both  parties,  so  far  as  such  sales  are 
concerned,  as  they  stood  prior  to  the  making  of  the  contract. 
(C.  C,  N.  D.  N.  Y.     May  22,  1899.) 

CoxE,   J.]      *  Westinghouse    Electric    &   Mfg.    Co.    r.    General 
Electric  Co.,  94  Fed.  Rep.  381. 

2.  Where  an  inventor  made  an  invention,  and  entered  into  an 
agreement  with  a  company  whereb}'  it  was  to  pay  him  "all  the 
costs  and  expenses  of  making  and  perfecting  such  invention, 
and  obtaining  patents,"  which  were  to  be  assigned  to  the  com- 
pany, in  consideration  whereof  the  inventor  was  to  have  the 
right  to  manufacture  the  invention  at  a  reasonable  profit,  and  in 
such  quantities  as  the  company  should  put  upon  the  market ; 
whereupon  the  inventor  perfected  one  sample  or  specimen  of 
the  invention  and  obtained  a  patent  therefor  and  the  company 
paid  the  weekly  bills  presented  for  labor,  materials,  etc.,  and 
for  obtaining  the  patent.  Held,  that  this  was  a  practical  con- 
struction of  the  contract  by  the  parties,  and  the  company  could 
not  thereafter,  in  respect  to  subsequent  inventions  of  the  same 
character,  set  up  that  its  obligations  covered  only  the  expenses 
of  obtaining  the  patent.  (C.  C.  A.,  6th  Cir.  June  6,  1899.) 
LuRTON,  J.]     *  Hartz  v.  Cleveland  Block  Co.,  95  Fed.  Rep.  681. 

II.  Specific  Performance. 

Where  one  of  the  objects  of  a  bill  in  e(iuity  is  to  obtain  the 
specific  performance  of  a  contract  whereby  it  is  alleged  that  one 


62  COPYRIGHTS. 

of  the  defendants  agreed  not  to  manufacture  patented  articles 
for  a  period  specified,  and  the  bill  fails  to  set  out  the  contract  or 
make  profert  thereof,  or  have  a  copy  thereof  annexed,  no  op- 
portunity is  afforded  the  court  to  determine  the  rights  of  the 
parties  thereunder,  and  it  would  not  be  justified  in  forbidding 
said  defendant  to  follow  an  employment  which  he  says  is  neces- 
sary for  the  support  of  himself  and  his  family.  (C.  C,  D. 
N.  Jer.     Dec.  14,  1898.) 

KiRKPATRicK,  J.]     *  Richmond  Mica  Co.  v.  De  Clyne  et  al,  90 
Fed.  Rep.  661. 

Copyriglits. 

I.   Copyrightable  Subject-Matter. 
II.  False  Marking. 

III.  Infringement. 
(a)  In  General. 
(6)    Injunction. 

IV.  Penalties. 

V.  Publication  and  Sale. 

I.  Copyrightable  Subject-Matter. 

A  reporter  of  the  decisions  of  a  court  may  not  copyright  the 
opinions  of  the  court  nor  the  statements  or  headnotes  of  cases 
as  prepared  by  the  court  or  any  member  thereof  (Banks  v. 
Manchester,  128  U.  S.  244;  9  Sup.  Ct.  36);  but  he  can  obtain 
a  copyright  for  it  as  an  author,  and  such  copyright  will  cover 
the  parts  of  it  of  which  he  is  the  author,  but  not  the  opinions 
themselves.  (Callaghan  v.  Myers,  128  U.  S.  617,  645,  650;  9 
Sup.  Ct.  177.)  The  compiler  and  annotator  of  a  volume  of 
state  statutes  may  also  copyright  his  book,  and  such  copyright 
covers  all  in  it  which  may  fairly  be  deemed  the  result  of  his 
labors,  such  as  marginal  references,  notes,  memoranda,  table  of 
contents,  indexes,  and  digests  of  judicial  decisions  prepared  by 
him  from  original  sources  of  information.  (C.  C.  A.,  6th  Cir. 
Nov.  9,  1898. ) 
Harlan,  Cir.  Jus.]     *  Howell  v.  Miller  e«  al,  91  Fed.  Rep.  129. 

II.  False  Marking. 

1.   R.  S.  §  4963,  as  it  read  prior  to  the  amendment  of  1897, 


COPYRIGHTS,  63 

imposed  a  iienalty  upon  "any  person  who  shall  insert  or  im- 
press" a  copyright  notice  in  or  upon  any  book  for  which  he  has 
not  obtained  a  copyright,  and  did  not  apply  to  a  person  "  who 
shall  issue  or  sell"  such  a  book  bearing  a  fictitious  copyright 
notice,  where  it  is  shown  that  he  did  not  make  the  book  nor 
cause  the  notice  to  be  inserted;  such  latter  provision  was  the 
purpose  of  the  amendment  of  1897.  (C.  C.  A.,  2d  Cir.  Dec. 
7,  1898.) 

Wallace,  J.]     *Ross  v.   Raphael  Tuck  &  Sons  Co.,  91  Fed. 
Rep.  128. 
2.   An  essential  element  of  the  copyright  notice,  as  required 
by  R.  S.  §  4962,  is  the  date  of  the  copyright.     The  phrases  in 
§4963,  viz.,  "such  notice  of  copyright  or  words  of  the  same 
import"  and  "a  notice  of  United  States  copyright,"  refer  most 
clearly  to  the  notice  specified  in  §  4962  ;  and  while  the  courts 
have  been  liberal  in  holding  any  form  of  notice  sufficient  which 
contains  the  essentials  of  "name,"  "claim  of  exclusive  right," 
and  "date  w'hen  obtained,"  they  have  not  yet  sustained  the 
sufficienc}'  of  a  notice  which  wholly  omits  one  of  these  three 
essentials^     (C.  C,  S.  D.  N.  Y.     June  8,  1899.) 
Lacombe,  J.]     *Hoertel  v.  Raphael  Tuck  &  Sons  Co.,  94  Fed. 
Rep.  844. 

III.  Infringement. 

(a)  In  General. 

1.  A  state  cannot  authorize  its  oflficers  or  agents  to  violate  a 
citizen's  right  of  property  in  a  copyright,  and  then  invoke  the 
eleventh  amendment  of  the  constitution  of  the  United  States  to 
protect  those  officers  or  agents  against  suit  by  the  owner  of  the 
copyright  for  the  protection  of  his  rights  against  injury  by  such 
officers  or  agents.  (C.  C.  A.,  6th  Cir.  Nov.  9,  1898.) 
Harlan,  Cir.  Jus.]     *  Howell  v.  Miller  et  nl,  91  Fed.  Rep.  129. 

2.  If  property  be  the  subject  of  litigation,  such  property  be- 
longing to  the  state  and  in  its  actual  possession  by  its  officers,  a 
suit  against  such  officers  to  enjoin  them  from  using  or  control- 
ling the  property  would  be  regarded  as  a  suit  against  the  state, 
and,  for  the  reasons  stated  in  Belknap  v.  Schild,  161  U.  S.  10, 
25,  16  Sup.  Ct.  443,  would  be  dismissed.  ^/c/. 

3.  By  an  act  of  the  Michigan  legislature  in  1895  it  w'as  pro- 


64  COPYRIGHTS. 

vided  tliat  all  the  general  laws  of  the  state  should  be  collected 
and  compiled,  without  alteration,  under  appropriate  heads  and 
titles,  with  marginal  notes,  references,  index,  and  complete 
digest  of  the  supreme  court  of  the  state  relating  to  such  general 
laws.  In  1897  provision  was  made  for  the  printing,  binding, 
distribution  and  sale  of  such  compilation  from  the  prepared 
manuscript.  The  manuscript  of  the  compilation  is  the  prop- 
erty of  the  state,  and  the  mere  i:)reparation  of  such  manuscript 
and  the  possession  of  it  by  the  state  do  not  constitute  a  legal 
wrong  to  the  plaintiff,  who  had  some  years  before  published 
and  copyrighted  "Howell's  Annotated  Statutes."  He  may, 
however,  invoke  the  aid  of  a  court  of  equity  to  restrain  the 
printing  and  publishing  such  manuscript,  if  the  printing  and 
publishing  of  it  would  infringe  his  rights  under  the  laws  of  the 
United  States.  */(/. 

4.  If  the  plaintiff  has  a  valid  copyright  he  is  entitled,  under 
the  constitution  and  laws  of  the  United  States,  to  the  sole 
liberty  of  printing,  reprinting,  publishing  and  vending  the 
books  copyrighted  by  him.  R.  S.  §  4952.  The  jurisdiction 
conferred  by  statute  (R.  S.  §  4970)  upon  the  federal  courts 
may  be  exercised  for  the  protection  of  an  individual  against 
any  injury  to  his  rights  under  the  copyright  statutes  by  officers 
of  a  state.  Those  officers  cannot  interpose  their  official  char- 
acter, or  the  orders  of  the  state,  against  such  relief  as  may  pro- 
perly be  granted.  ^Id. 

5.  The  author  of  a  literary  composition  may  claim  it  in 
whatever  language  or  form  of  words  it  can  be  identified  as  his 
production.  The  true  test  of  piracy  is,  not  whether  a  com- 
position is  copied  in  the  same  language  or  the  exact  words  of 
the  original,  but  whether,  in  substance,  it  is  reproduced  ;  not 
whether  the  whole,  but  whether  a  material  part  is  taken  with- 
out authority.  (C.  C,  N.  D.  Ills.  April  26,  1899.) 
Seaman,  J.]     *  Maxwell  v.  Goodwin,  93  Fed.  Rep.  665. 

6.  The  rule  in  patent  causes  at  law,  that  issues  of  infringe- 
ment and  identity  must  be  passed  upon  by  the  jury,  is  equally 
applicable  to  the  issues  of  piracy  and  infringement  of  copyright. 
Under  the  same  rule  the  court  is  authorized  to  set  aside  a  ver- 
dict unsatisfactory  to  itself  as  against  the  weight  of  evidence. 


COPYRIGHTS.  65 

7.  Where  it  was  the  duty  of  a  salaried  einjiloy^,  inter  (iliti,  to 
compile,  pre))are,  and  revise  certain  instruction  and  (juestion 
papers,  the  literary  ))roduct  of  such  work  became  tiie  projjcrty 
of  the  employer,  which  he  was  entitled  to  coi)yright,  and  which 
when  copyrighted,  the  emi)loyt§,  after  severing  his  connection 
with  the  employer,  would  have  no  more  riglit  than  a  stranger 
to  reproduce  or  co{)y.  (C.  C,  S.  D.  N.  Y.  Apr.  4,  1S99.) 
Lacombe,  J.]     *  Colliery  Engineer  Co.   r.   United  Corresi)ond- 

ence  Schools  Co.  et  al,  94  Fed.  Rep.  153. 

8.  While  he  was  not  at  liberty  to  reproduce  so  much  of  his 
work  as  had  been  cof)yrighted  by  his  employer  for  whom  it  was 
prepared,  even  by  availing  himself  of  liis  recollection  of  the  con- 
tents of  the  copyrighted  books  and  pamphlets,  yet  the  employ^ 
was  not  debarred  after  his  contract  terminated  from  making  a 
new  compilation,  nor  from  using  the  same  original  sources  of 
information,  nor  from  availing  of  such  information  and  experi- 
ence as  he  ma}'  have  acquired  in  the  course  of  his  employment. 

9.  Where  the  chief  purpose  of  a  copj-righted  pamphlet  was  to 
advertise  the  business  of  its  author  and  publisher,  no  copies  of 
the  pamphlet  being  sold  or  offered  for  sale  but  large  numbers 
having  been  distributed  free,  and  where  it  is  of  doubtful  com- 
mercial value  in  other  respects,  Held,  that  these  facts  afford 
insufficient  foundation  to  warrant  an  award  of  substantial  dam- 
ages for  the  infringement  of  the  coi)y right.  (C.  C,  W.  D.  Mo. 
June  12,  1899.) 

Philips,  J.]     *  D'Ole  v.  Kansas  City  Star  Co.,  94  Fed.  Rei).  840. 

III.   Infringement. 

(6)   Injunction. 

1.  When  the  legislature  of  a  state  has  determined  that  tlie 
public  interests  require  a  new  compilation  of  the  laws  of  the 
state,  and  the  work  has  been  completed,  a  court  of  equity 
should  not  interfere  by  injunction  to  restrain  an  alleged  in- 
fringement of  copyright,  unless  the  right  to  such  relief  is  clearly 
manifest  from  the  evidence.  (C.  C.  A.,  6th  Cir.  Nov.  9,  1898. ) 
Harlan,  Cir.  Jus.]     *  Howell  v.  Miller  et  al,  91  Fed.  Rep.  129. 

2.  Where  the  answer  to  the  question  of  fact  ui)on  which  a 
suit  for  the  piracy  of  a  copyrighted  publication   turns  is  not 

5 


66  COPYRIGHTS. 

clear,  the  granting  of  a  preliminary  injunction  would  be  prac- 
tically a  judgment  in  advance  of  hearing  and  might  work  irre- 
parable damage  to  the  defendants.  Under  such  circumstances 
it  ife  best  to  relegate  the  question  to  final  hearing.  (C.  C. ,  S.  D. 
N.  Y.     Apr.  4,  1899.) 

Lacombe,  J.]     *  Colliery  Engineering  Co.  v.  United  Correspond- 
ence Schools  et  al,  94  Fed.  Rep,  152. 
IV.   Penalties. 

1.  The  action  authorized  by  §  4965  R.  S.  in  so  far  as  it  re- 
lates to  the  recovery  of  money  is  one  to  enforce  a  penalty  and 
not  an  action  to  recover  compensation  for  the  actual  damage 
which  the  plaintiff  has  sustained  by  reason  of  the  alleged  in- 
fringement of  his  copyright.  The  money  judgment  for  which 
the  statute  provides  is  one  for  a  penalty,  and  its  character  in  this 
respect  is  not  at  all  affected  by  the  fact  that  its  recovery  is  to  be 
had  in  a  civil  action  and  not  by  a  criminal  prosecution.  Nor 
can  the  action  under  this  statute  be  regarded  as  remedial,  be- 
cause one-half  of  any  judgment  recovered  is  for  the  use  of  the 
plaintiff  whose  rights  have  been  invaded  by  the  infraction  of  the 
law.  No  provision  is  made  for  the  recovery  of  any  sum  by  the 
plaintiff  except  as  part  of  an  entire  penalty,  to  be  divided,  it  is 
true,  but  only  by  the  same  judgment  by  which  it  is  inflicted 
upon  the  defendant;  and  it  is  apparent  that  the  statute  does  not 
contemplate  that  any  recovery  shall  be  had  unless  the  case  pre- 
sented shows  that  the  defendant  is  justly  subject  to  the  entire 
penalty  which  the  statute  provides  for  its  violation.  (D.  C, 
N.  D.  Cal.     July  17,  1899.) 

De  Haven,  J.]     *  McDonald  v.  Hearst,  95  Fed.  Rep.  656. 

2.  Section  4965  R.  S.  provides  for  the  recovery  of  a  penalty 
for  the  infringement  of  a  copyright  obtained  pursuant  to  the 
provisions  of  §  4956  R.  S. ;  hence,  a  plaintiff  may  not  maintain 
an  action  for  the  recovery  of  penalty  under  §  4965  unless  he  has 
complied  with  the  conditions  precedent  stated  in  §  4956,  which 
should  be  strictly  construed,  because  it  contains  the  condition 
precedent  to  the  recovery  of  heavy  penalties.  (C.  C.  A.,  2d  Cir. 
July  18,  1899.) 

Thomas,  J.]     *  Bennett  t;.  Carr,  96  Fed.  Rep.  213. 

3.  Section  4956  R.  S.  provides  that;    "No  person  shall  be 


COPYRIGHTS.  67 

entitled  to  a  copyright  unless  he  shall  *  *  *  *  deliver  *  *  * 
or  deposit  *  *  *  a  printed  copy  of  the  title  of  the  ])ook,  or  a 
description  of  the  painting  j  *  *  M<  *  nor  unless  he  shall  also 
*  *  *  deliver  or  deposit  *  *  *  two  copies  of  such  copyright 
book  '!^  *  *  or  in  case  of  a  painting  *  *  *  a  photograph  of 
the  same,"  in  the  Librar}'  of  Congress.  The  statute  therefore 
specifically  states  that  in  case  of  a  painting,  there  must  be  a 
description  thereof  and  a  photograph  of  the  same,  and  it  may 
not  be  read  to  mean  that  the  deposit  of  a  photograph  shall 
fulfill  both  requirements,  so  as  to  enable  the  painter  to  recover 
penalties  for  infringement.  *7d. 

V.  Publication  and  Sale. 

1.  "Publication"  in  copyright  law  is  "the  act  of  making 
public  a  book;  offering  to  public  notice;  that  is,  offering  or  com- 
municating it  to  the  public  by  sale  or  distril)ution  of  copies." 
Without  undertaking  to  state  the  qualifications  of  this  definition, 
as  applied  to  certain  incidents,  by  which  the  book  might  be 
exhibited  by  its  author  prior  to  copyrighting  it  without  amount- 
ing to  a  publication  within  the  spirit  of  the  statute,  it  is  safe  to 
say  that  the  appearance  of  a  book  or  pamphlet,  after  its  deliv- 
ery to  the  plaintiff  by  the  printer  or  publisher,  in  a  public 
hotel,  subject  to  be  seen  and  read  by  any  one  about  the  place, 
was  "rendering  it  accessible  to  public  scrutiny,"  and  was  like- 
wise "communicating  it  to  the  public  by  distribution  of  copies " 
and  rendered  a  subsequent  copyright  upon  the  book  void. 
(C.  C,  W.  D.  Mo.     June  12,  1899.) 

Philips,  J.]     ^  D'Ole  v.  Kansas  City  Star  Co. ,  94  Fed.  Rep.  840. 

2.  The  serial  publication  of  a  book  in  a  monthly  magazine 
prior  to  any  steps  taken  toward  securing  a  copyright  is  such  a 
publication  of  the  same  within  the  meaning  of  the  act  of  Feb- 
ruar}^  3,  1831,  as  to  vitiate  a  copyright  of  the  whole  1)ook  ob- 
tained subsequently,  but  prior  to  the  publication  of  the  book  as 
an  entity.     (Sup.  Ct.  U.  S.     Apr.  24,  1899.) 

Brown,  J.]     *  Holmes  r.  Hurst,  89  0.  G.  189.     174  U.  S.  82. 

3.  It  is  the  settled  law  of  this  country  and  England  that  the 
right  of  an  author  to  a  monopoly  of  his  publication  is  deter- 
mined by  the  copj^right  act,  which  superseded  the  common 
law.  */rf. 


68  DAMAGES   AND    PROFITS. 

4.  The  right  secured  by  the  cop3'right  act  is  not  a  right  to  the 
use  of  certain  words,  because  they  are  the  common  property  of 
the  human  race,  nor  is  it  the  right  to  ideas  alone,  since  in  the 
absence  of  means  to  communicate  them  they  are  of  value  to  no 
one  but  the  author;  but  the  rigbt  is  to  that  arrangement  of 
words  which  the  author  has  selected  to  express  bis  ideas.     */cZ. 

5.  If  the  several  parts  of  a  publication  bad  been  once  dedi- 
cated to  the  public  and  the  monopoly  of  the  author  thus  aban- 
doned, it  cannot  be  reclaimed  by  collecting  such  parts  together 
in  the  form  of  a  book.  ^Id. 

6.  If  an  author  permits  his  intellectual  productions  to  be  pub- 
lished, either  serially  or  collective!}',  his  right  to  a  copyright  is 
lost  as  effectually  as  the  right  of  an  inventor  to  a  patent  upon 
an  invention  which  he  deliberately  abandons  to  the  public,  and 
this,  too,  irrespective  of  his  actual  intention  to  make  such  aban- 
donment. */(/. 

7.  The  word  "  book  "  as  used  in  the  statute  is  not  to  be  un- 
derstood in  its  technical  sense  of  a  bound  volume,  but  any 
species  of  publication  which  the  author  selects  to  embody  his 
literary  production.  There  is  no  distinction  between  the  publi- 
cation of  a  book  and  the  publication  of  the  contents  of  such 
book,  whether  such  contents  be  published  piecemeal  or  en 
bloc.  ^M. 

8.  There  is  no  fixed  time  within  which  an  author  must  apply 
for  copyright,  so  that  it  be  "before  publication,"  and  if  the 
publication  of  the  parts  serially  be  not  a  publication  of  the  book 
a  copyright  might  be  obtained  after  the  several  parts,  whether 
published  separately  or  collectively,  had  been  in  general  circu- 
lation for  years.  This  cannot  be  within  the  spirit  of  the  copy- 
right act.  */(/. 

Damages  and  Profits. 

I.  Estimation  and  Measure  of. 
II.   Nominal. 
I.  Estimation  and  Measure  of. 

1.  Generally,  the  profit  derived  by  a  defendant  from  his  in- 
corporation of  an  infringing  article  into  his  ultimate  product,  is 
to  be  measured  by  the  excess  in  price  which  he  has  received  for 
that  product  by  his  wrongful  inclusion  therein  of  the  patented 


DAMAGES   AND    PROFITS.  69 

thing.  But  this  measure  is  not  exclusive  of  all  others.  If 
there  has  been  a  profit  in  fact  and  that  profit  can  be  shown  in 
any  legitimate  mode,  the  plaintiff  is  entitled  to  recover  it;  and 
it  would  be  quite  as  legitimate  to  establish  the  existence  of  a 
profit  by  showing  that  tbe  defendants  by  using  the  infringing 
article  had  cheapened  the  cost  of  their  product,  as  by  showing 
that  by  such  use  they  had  enhanced  the  price  of  that  product. 
(C.  C,  E.  D.  Penn.  Dec.  21,  1898.) 
Dallas,  J.]     *Rose  v.  Hirsch  et  al,  91  Feb.  Rep.  149. 

2.  The  law  is  solicitous  that  wrongdoers  shall  not  profit  by 
wrongdoing,  but  it  does  not  sanction  the  substitution  of  un- 
founded conjecture  for  proof  in  determining  either  the  fact  of 
the  existence  of  profit  or  the  amount  thereof,  and  where  the 
plaintiff  has  failed  to  adduce  evidence  from  which  a  finding  of 
profits  upon  any  theory  can  be  founded,  no  decree  for  profits 
can  be  given.  -^/rf. 

3.  In  an  action  at  law  f(3r  damages  for  the  infringement  of  a 
patent,  if  the  plaintiff  shows  no  established  license  fee,  no 
market  price,  and  no  other  use  tlian  that  of  the  defendant, 
there  is  no  basis  for  computation  of  substantial  damages,  and 
he  can  only  recover  nominal  damages.  (C.  C.  A.,  1st  Cir. 
Dec.  9,  1898.) 

Putnam,  J.]     *City  of  Boston  t:  Allen,  91  Fed.  Pvep.  248. 

4.  In  proving  profits  it  is  necessary  to  show  a  saving  by  the 
use  of  the  infringing  tool  over  the  cost  of  operating  any  other 
tool  which  tbe  defendant  was  free  to  use.  (C.  C.  A.,  2d  Cir. 
Jan.  5,  1899.) 

Lacombe,    J.]      *Hohorst   v.    Hamburg-American   Packet   Co. 
et  al,  91  Fed.  Rep.  655. 

5.  AVhere  it  is  shown  that  prior  to  November,  1894,  the  pat- 
ented articles  could  not  be  purchased  except  from  the  patentee, 
who  alone  made  them  and  who  maintained  a  close  monopol}^  of 
their  manufacture,  and  that  the  infringers  purchased  such 
articles  from  him  and  thus  acquiesced  in  the  monopoly  of  his 
patent  from  1891  to  .June,  1894,  at  which  latter  date  they 
ceased  buying  of  the  patentee  and  thereafter  deliberately  in- 
fringed his  patent  until  enjoined  in  this  case,  it  is  reasonable  to 
conclude  that  if  they  had  not  thus  deliberately  and  wantonly 


70  DAMAGES    AND    PROFITS. 

become  infringers  and  wrongfully  trespassed  upon  the  patentee's 
rights,  they  would  have  purchased  from  him  the  articles  they 
used.     (C.  C.  A.,  3d  Cir.     May  4,  1899.) 
BuFFiNGTON,  J.]     * Rose  V.  Hirsh  et  at.,  94  Fed.  Rep.  177. 

6.  These  facts  unite  to  afford  substantial,  not  mere  conjec- 
tural grounds  upon  which  to  base  the  conclusion  that  the  pat- 
entee, by  the  infringers'  wrongful  acts  lost  the  sale  of  articles" 
purchased  elsewhere,  and  to  that  extent  he  was  damaged.   */rf. 

7.  Where  the  operations  of  the  manufacturing  patentee  are 
exceedingly  simple,  and  the  cost  of  raw  materials  used  is  easily 
ascertained,  a  comparatively  easy  basis  is  afforded  for  determin- 
ing the  operative  cost  and  the  cost  of  tiiC  product  of  his  manu- 
facture, and  where  the  evidence  as  to  such  cost  is  not  only  not 
disputed,  but  is  corroborated  by  the  evidence  for  the  defendant 
infringers,  no  grounds  exist  for  the  conclusion  of  the  master  that 
"  the  evidence  presents  no  definite  basis  upon  which  damages 
can  be  assessed."  */d. 

8.  In  ascertaining  the  profits  of  a  corporation,  due  to  its 
manufacture  and  sale  of  an  article  in  infringement  of  a  patent, 
where  such  manufacture  and  sale  constitute  but  a  minor  part  of 
the  business,  it  is  improper,  in  computing  general  expenses,  to 
include  such  items  as  interest  on  dividends  to  stockholders,  in- 
surance, taxes,  attorneys'  fees,  or  physicians'  fees  while  in 
attendance  upon  an  injured  employee;  but  a  sum  paid  to  a 
commercial  agency  for  information  as  to  credits,  etc.,  is  a  proper 
part  of  sale  expenses  and  may  be  included,  inasmuch  as  it  is  the 
ordinary  method  by  which  business  men  regulate  their  sales. 
(C.  C,  S.  D.  Ohio,  W.  D.     July  10,  1899.) 

Taft,  J.]     *Nat'l  Folding-Box  &  Paper  Co.  v.  Dayton  Paper 
Novelty  Co.  et  al,  95  Fed.  Rep.  991. 

9.  It  is  also  proper  in  such  a  case  to  include  "  the  usual  sal- 
aries of  the  managing  officers  "  as  a  part  of  the  general  expenses, 
but  where  such  salaries  seem  to  be  excessive,  and  to  be  really  a 
division  of  profits,  they  should  be  cut  down  to  a  reasonable 
figure.  *Id. 

10.  Where  in  a  suit  upon  the  same  patent  in  another  circuit, 
and  against  parties  in  privity  with  the  defendants  in  the  suit 
at  bar,  the  finding  of  the  circuit  court  of  appeals  that  all  of 


DECISIONS   OF    THE    COMMISSIONERS   OF   PATENTS.  ( 1 

the  profits  from  the  sale  of  the  infringing  articles  were  due  to 
the  patented  invention  of  complainant,  is  binding  upon  the 
court.  '•'/'/. 

11.  The  profits  allowed  in  equity  for  the  injury  that  a  pat- 
entee has  sustained  by  the  infringement  of  his  patent  are  to  be 
considered  as  a  measure  of  unliquidated  damages,  which,  as  a 
general  rule  and  in  the  absence  of  special  circumstances,  do  not 
bear  interest  until  their  amount  has  been  judicially  ascertained; 
infringement  of  a  fraudulent  or  wanton  character  may  justify 
the  imposition  of  interest  under  the  decisions  of  the  supreme 
court.  (C.  C,  S.  D.  Ohio.  Nov.  2,  1899.) 
Taft,  J.]  *Nat'l  Folding-Box  &  Paper  Co.  r.  Dayton  Paper 
Novelty  Co.  et  al,  97  Fed.  Rep.  331.' 

II.  Nominal. 

Where  the  defendant  has  derived  an  advantage  from  the  use 
of  the  infringing  device,  but  the  character  of  the  testimony  by 
which  this  fact  was  established  was  so  conflicting  and  uncertain, 
and  the  knowledge  of  the  witnesses  was  so  limited  in  scope,  that 
it  was  manifestly  impossible  to  obtain  therefrom  any  basis  of 
calculation  from  which  to  determine  with  any  degree  of  cer- 
tainty, either  the  extent  of  the  use  of  the  infringing  devices,  or 
the  saving  effected,  or  profits  derived  from  such  use,  nominal 
damages  only  can  be  recovered.  (C.  C.  A.,  2d  Cir.  Jan.  5, 
1899.) 

Lacombe,    J.]     *Hohorst   r.    Hamburg-American    Packet  Co. 
etal,  91  Fed.   Rep.  655. 

Decisions  of  tlie  Comnaissioner  of  Patents. 

I.  Affirmed  on  Appeal  to  Court  of  Appeals,  D.  C. 
II.  Reversed  on  Appeal  to  Court  of  Appeals,  D.  C. 
III.  Affirmed  in  Part  and  Reversed  in  Part. 
I.   Affirmed  on  Appeal  to  the  Court  of  Appeals,  D.  C. 
Marvel  v.  Decker  et  al ,  86  0.  G.  348.    Dec.  9,  1898.    Morris,  J. 
Nimmy  V.   Com'r  of  Patents,  86  0.  G.  345.      Dec.   9,    1898. 
Morris,  J. 

Pickles  V.  Aglar,  86  O.  G.  346.      Dec.  9,  1898.      Morris.  J. 
Cain  V.  Park,  86  0.  G.  797.     Jan.  3,  1899.     Shepard,  J. 
Esty  V.  Newton,  86  0.  G.  799.     Jan.  3,  1899.     Shepard,  J. 


72  DECISIONS   OF   THE    FEDERAL   COURTS. 

■  Traver  v.  Brown,  86  0.  G.  1324.     Jan.  3,  1899.     Shepard,  J. 

Winslowv.  Austin,  86  0.  G.  2171.  Jan.  10,  1899.  Alvey, 
C.  J. 

Smith  V.  Duell,  Com'r  of  Pats.,  87  0.  G.  893.  Feb.  7,  1899. 
Shepard,  J. 

Fowler  v.  Dodge,  87  0.  G.  895.     Apr.  4,  1899.     Morris,  J. 

Barratt  v.  Duell,  Com'r  of  Pats.,  87  0.  G.  1076.     Morris,  J. 

Cross  V.  PhilHps,  87  0.  G.  1399.     Feb.  8,  1899.     Shepard,  J. 

Bedford  v.  Duell,  Com'r  of  Pats.,  87  0.  G.  1611.     Alvey,  C.  J. 

Williams  v.  Ogle,  87  0.  G.  1958.    Jan.  17,  1899.    Alvey,  C.  J. 

Reutei'.  Elwell,  87  0.  G.  2119.     May  4,  1899.     Shepard,  J. 

Mower  v.  Duell,  Com'r  of  Pats.,  88  0.  G.  191.  June  6, 
1899.     Alvey,  C.  J. 

Dowry  v.  Duell,  Com'r  of  Pats.,  88  0.  G.  717.  Apr.  4,  1899. 
Shepard,  J. 

Foster  v.  Antisdel,  88  0.  G.  1527.     May  2,  1899.    Alvey,  C.  J. 

Hulett  V.  Long,  89  0.  G.  1141.     Oct.  4,  1899.     Alvey,  C.  J. 

II.  Reversed  on  Appeals  to  Court  of  Appeals,  D.  C. 

Tracy  et  al.  v.  Leshe,  87  0.  G.  891.  Jan.  10,  1899.  Shep- 
ard, J. 

Marsden  v.  Duell,  Com'r  of  Patents,  87  0.  G.  1239.  Feb.  8, 
1899.     Morris,  J. 

III.  Affirmed  in  Part  and  Reversed  in  Part  on  Appeal  to 

THE  Court  of  Appeals,  D.  C. 
Bader  v.  Vajen,  87  0.  G.  1235.     Feb.  8,  1899.     Morris,  J. 
De  Wallace  v.   Scott  et  al.,  88  0.   G.   1704.     June  6,  1899. 
Shepard,  J. 

Griffin  v.  Swenson,  89  0.  G.  919.     June  6,  1899.     Morris,  J. 

Decisions  of  the  Federal  Courts. 

I.   Affirmed  on  Appeal. 
II.   Reversed  on  Appeal. 

III.  Appeals  Dismissed. 

IV.  Disposition  of  Motions  for  Rehearing. 
I.  Affirmed  on  Appeal. 

1.  Norton  et  aJ.  v.  Jensen,  81  Fed.  Rep.  494.  Appealed 
from  the  Circuit  Court  of  the  United  States  for  the  District  of 


DECISIONS    OF   THE    FEDERAL   COURTS.  73 

Oregon.     Judgment  of  the  court  below  affirmed.      (C.   C.  A., 

9th  Cir.     Oct.  24,  1898.) 

Morrow,  J.]     *  Norton  et  al.  v.  Jensen,  90  Fed.  Rep.  415. 

2.  Vermilya  v.  Pennsylvania  Steel  Co.  et  al,  87  Fed.  Rep.  481. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Eastern  District  of  Pennsylvania.  Decree  of  the  Circuit  Court 
affirmed.     (C.  C.  A.,  3d  Cir.     Nov.  28,  1898.) 

AcHESOx,  J.]     *  Pennsylvania  Steel  Co.  et  al.   r.  Vermilya,  90 
Fed.  Rep.  493. 

3.  Brill  r.  St.  Louis  Car  Co.  et  ai,  80  Fed.  Rep.  909.  Ap- 
pealed from  the  Circuit  Court  of  the  United  States  for  the 
Eastern  District  of  Missouri.  Decree  of  the  Circuit  Court 
affirmed.      (C.  C.  A.,  8th  Cir.     Nov.  28,  1898.) 

Thayer,  J.]     =^  Brill  r.  St.  Louis  Car  Co.  et  al,  90  Fed.   Rep. 
666. 

4.  United  States  Glass  Co.  v.  Atlas  Glass  Co.  et  ai,  88  Fed. 
Rep.  493.  Sand.  Pat.  Dig.  '98,  5,  119.  Appealed  from  the 
Circuit  Court  of  the  United  States  for  the  Western  District  of 
Pennsylvania.      (C.  C.  A.,  3d  Cir.     Dec.  6,  1898.) 

Dallas,.  J.]     *  United  States  Glass  Co.  r.  Atlas  Glass  Co.  et  al., 
90  Fed.  Rep.  724. 

5.  Van  Camp  Packing  Co.  r.  Cruikshanks  Bros.  Co.,  not 
reported.  Appealed  from  the  Circuit  Court  of  the  United 
States  for  the  Western  District  of  Pennsylvania.  Refusing 
grant  of  preliminary  injunction.  Appeal  dismissed  and  order 
of  the  lower  court  affirmed.  (C.  C.  A. ,  3d  Cir.  Nov.  28,  1898. ) 
Butler,  J.]     *Van  Camp  Packing  Co.  v.   Cruikshanks  Bros.. 

Co.,  90  Fed.  Rep.  814. 

6.  Solvay  Process  Co.  v.  Michigan  Alkali  Co.,  not  reported. 
Appealed  from  the  Circuit  Court  of  the  United  States  for 
the  Eastern  District  of  Michigan.  Decree  of  the  Circuit  Court 
affirmed.     (C.  C.  A.,  6th  Cir.     Nov.  28,  1898.) 

Taft,  J.]     *  Solvay  Process  Co.  v.  Michigan  Alkali  Co.  et  al, 
90  Fed.  Rep.  818. 

7.  Societe  Anonyme  du  Filtre  Chamberland  Systeme  Pasteur 
et  al.  V.  Allen  et  al,  84  Fed.  Rep.  812.  Sand.  Pat.  Dig.  '98, 
47,  49.     Appealed  from  the  Circuit  Court  of  the  United  States 


74  DECISIONS    OF    THE    FEDERAL    COURTS. 

for  the  \^^estern  Division  of  the  Northern  District  of  Ohio. 
Order  of  lower  court  refusing  injunction  affirmed.  (C.  C.  A., 
6th  Cir.     Nov.  9,  1898.) 

Taft,  J.]     *Societe  Anonyme  du  Filtre  Chamberland  Systeme 
Pasteur  et  al.  v.  Allen  et  a/.,  90  Fed.  Rep.  815. 

8.  United  States  Mitis  Co.  v.  Carnegie  Steel  Co.  Lim.,  89 
Fed.  Rep.  206,  343.  Sand.  Pat.  Dig.  1898,  101,  131.  Ap- 
pealed from  the  Circuit  Court  of  the  United  States  for  the 
Western  District  of  Pennsylvania.  No  opinion.  Affirmed. 
(C.  C.  A.,  3d  Cir.     Oct.' 21,"  1898.) 

*  Carnegie  Steel  Co.  Lim.  v.  United  States  Mitis  Co.,  90  Fed. 
Rep.  829. 

9.  Von  Mum  et  al  v.  Witteman  et  al,  85  Fed.  Rep.  966. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Southern  District  of  New  York.  Decree  of  the  Circuit  Court 
affirmed.     (C.  C.  A.,  2d  Cir.     Dec.  7,  1898.) 

Per  Curiam.]     *  Von  Mum  et  al  v.  Witteman  et  al,  91  Fed. 
Rep.  126. 

10.  Ross  V.  Raphael  Tuck  &  Sons  Co.,  not  reported.  In 
Error  to  the  Circuit  Court  of  the  United  States  for  the  Southern 
District  of  New  York.  Judgment  of  the  Circuit  Court  affirmed. 
(C.  C.  A.,  2d  Cir.     Dec.  7,  1898.) 

Wallace,  J.]     Ross  v.  Raphael  Tuck  &  Sons  Co.,  91  Fed.  Rep. 
128. 

11.  Howell  V.  Miller  et  al,  not  reported.  Appealed  from 
the  Circuit  Court  of  United  States  for  the  Eastern  District 
of  Michigan.  The  order  denying  injunction  affirmed.  (C.  C. 
A.,  6th  Cir.     Nov.  9,  1898.) 

Harlan,  Cir.  Jus.]     *  Howell  v.  Miller  et  al,  91  Fed.  Rep.  129. 

12.  Electric  Car  Co.  of  America  et  al  v.  Nassau  Electric  Ry. 
Co.,  89  Fed.  Rep.  204.  Appealed  from  the  Circuit  Court  of  the 
United  States  for  the  Eastern  District  of  New  York.  Order  of 
the  Circuit  Court  granting  a  preliminary  injunction  affirmed. 
(C.  C.  A.,  2d  Cir.     Dec.  7,  1898.) 

Shipman,  J.]     *  Electric  Car  Co.   of  America  et  al  v.   Nassau 
Electric  Ry.  Co.,  91  Fed.  Rep.  142. 

13.  Lovell  V.  Johnson,  82  Fed.    Rep.    206.     Appealed  from 


DECISIONS    OF    THE    FEDERAI.    COURTS.  75 

the  Circuit  Court  of  the  United  States  for  the  Distriet  of   ■Shissa- 
chusetts.       Decree   of    the   Circuit    Court   dismissing    tlu'   bill 
affirmed.     (C.  C.  A.,  1st  Cir.     Dec.  27,  1898. ) 
Colt,  J.]     *Lovell  v.  Johnson,  91  Fed.  Rep.  160. 

14.  Deering  Harvester  Co.  v.  Whitman  &  Barnes  Mfg.  Co., 
86  Fed.  Rep.  764.  Sand.  Pat.  Dig.  1898,  153.  Appealed  from 
the  Circuit  Court  of  the  United  States  for  the  Northern  District 
of  Ohio.  Decree  of  the  Circuit  Ct)urt  affirmed.  (C.  C.  A.,  Gtli 
Cir.     Dec.   19,  1898.) 

LuRTON,  J.]     *  Deering  Harvester  Co.   v.   Whitman  &  Barnes 
Mfg.  Co.,  91  Fed.  Rep.  376. 

15.  Hohorst  v.  Hamburg-American  Packet  Co.,  84  Fed.  Rep. 
354.  82  0.  G.  898,  Sand.  Pat.  Dig.  23.  Appealed  from  the 
Circuit  Court  of  the  United  States  for  the  Southern  District  of 
New  York.  Decree  of  the  Circuit  Court  affirmed.  (C.  C.  A., 
2d  Cir.     Jan.  5,  1899. ) 

Lacombe,    J.]      *  Hohorst  r.    Hamburg-American   Packet  Co. 
etal,  91  Fed.  Rep.  655. 

16.  Thomson-Houston  Electric  Co.  v.  Athol  and  Orange  St. 
Ry.  Co.,  83  Fed.  Rep.  203.  Sand.  Pat.  Dig.  1898,  114.  Ap- 
pealed from  the  Circuit  Court  of  the  United  States  for  the 
District  of  Massachusetts.  Decree  of  CiiTuit  Court  aflirmed. 
(C.  C.  A.,  1st  Cir.     Jan.  26,  1899.) 

Colt,    J.]      *  Thomson-Houston    Electric    Co.    r.    Athol    and 
Orange  St.  Ry.  Co.,  91  Fed.  Rep.  767. 

17.  "William  Schollhorn  Co.  r.  Bridgeport  Mfg.  Co.  ef  aJ.,  84 
Fed.  Rep.  674.  Appealed  from  the  Circuit  Court  of  the  United 
States  for  the  District  of  Connecticut.  Decree  of  Circuit  Court 
affirmed.      (C.  C.  A.,  2d  Cir.     Jan.  2,  1899.) 

Shipman,  J.]     *  Bridgeport  Mfg.   Co.  et  al.  v.  \\"\\\\-a\\\  Scholl- 
horn, 91  Fed.  Rep.  775. 

18.  Thatcher  Mfg.  Co.  v.  Creamery  Package  Mfg.  Co.  et  al., 
not  reported.  Appealed  from  the  Circuit  Court  of  the  United 
States  for  the  Northern  District  of  Illinois,  Northern  Division. 
Decree  of  the  Circuit  Court,  dismissing  the  bill  for  want  of 
equity,  affirmed.      (C.  C.  A.,  7th  Cir.     Feb.  7,  1899.) 

Per  Curiam.]     *  Thatcher  Mfg.  Co.  v.  Creamery  Package  Mfg. 
Co.  etal,  91  Fed.  Rep.  919. 


76  DECISIONS    OF    THE    FEDERAL   COURTS. 

19.  Schrei  et  al.  v.  Morris  et  al,  87  Fed.  Rep.  217.  Appealed 
from  the  Circuit  Court  of  the  United  States  for  the  Northern 
District  of  Ilhnois.  Decree  of  the  Circuit  Court  dismissing  the 
bill  affirmed.     (C.  C.  A.,  7th  Cir.     Feb.  16,  1899.) 

BuNN,  J.]     Schrei  et  al.  v.  Morris  et  «/.,  91  Fed.  Rep.  992. 

20.  Doig?'.  Morgan  Machine  Co.,  89  Fed.  Rep.  489.  Sand. 
Pat.  Dig.,  1898.  50.  Appealed  from  the  Circuit  Court  of  the 
United  States  for  the  Northern  District  of  New  York.  Order 
granting  preliminary  injunction  affirmed.  (C.  C.  A.,  2d  Cir. 
Jan.  5,  1899.) 

Per  Curiam.]   *  Doig  v.  Morgan  Machine  Co.,  91  Fed.  Rep.  1001. 

21.  Graham  v.  Earl,  not  reported.  In  error  to  the  Circuit 
Court  of  the  United  States  for  the  Northern  District  of  Cali- 
fornia. Judgment  of  the  Circuit  Court  affirmed.  (C.  C.  A., 
9th  Cir.     Oct.  24,  1897.) 

De  Haven,  J.]     *  Graham  v.  Earl,  82  Fed.  Rep.  737;  92  Fed. 
Rep.  155. 

22.  Wilson  et  al.  v.  McCormick  Harvesting  Mach.  Co.,  not 
reported.  Appealed  from  the  Circuit  Court  of  the  United 
States  for  the  Northern  District  of  Illinois,  Northern  Division. 
Decree  dismissing  complainant's  bill  affirmed.  (C.  C.  A.,  7th 
Cir.     Feb.   16,  1899.) 

Woods,  J.]     =i^  Wilson  et  al.   v.    McCormick  Harvesting  Mach. 
Co.,  92  Fed.  Rep.  167. 

23.  Western  Electric  Co.  v.  Western  Tel.  Const.  Co.,  81  Fed. 
Rep.  572.  Appealed  from  the  Circuit  Court  of  the  United 
States  for  the  Northern  District  of  Illinois,  Northern  Division. 
Decree  dismissing  complainant's  bill  affirmed.  (C.  C.  A.,  7th 
Cir.     Feb.  16,  1899.) 

Woods,  J.]     *  Western  Electric  Co.  v.  Western  Tel.  Const.  Co., 
92  Fed.  Rep.  181. 

24.  Proctor  &  Gamble  Co.   v.    Globe  Refining  Co.,   not  re- 
ported.    Appealed  from  the  Circuit  ("ourt  of  the  United  States 
for  the  District  of  Kentucky.       Order  denying  a  preliminary 
injunction  affirmed.      (C.  C.  A.,  6th  Cir.     Mar.  7,  1899.) 
Severens,  J.]     <^ Proctor  &  Gamble  Co.  v.  Globe  Refining  Co., 

92  Fed.  Rep.  357. 


DECISIONS    OF    THE    FEDERAL   COURTS.  77 

25.  Ginna  et  al.   v.   ^rersereau  Mfg.  Co.,  69  Fed.    Rep.   344. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
District  of  New  Jersey.      Decree  of  the  Circuit  Court  dismissing 
the  bill  affirmed.      (C.  C.  A.,  3d  Cir.     Jan.  25,  1899.) 
Dallas,  J.]     *  Ginna  et  al.  v.   Mersereau  INIfg.    (]o.,   92  Fed. 

Rep.  369. 

26.  Universal  Milling  Co.  r.  Willimantic  Linen  Co.,  82  Fed. 
Rep.  228.  Appealed  from  the  Circuit  Court  of  the  United 
States  for  the  District  of  Connecticut.  Decree  affirmed.  (C.  C. 
A.,  2d  Cir.     Jan.  25,  1899.) 

Per  Curiam.]     *  Universal  Milling  Co.    r.    ^^'illimantic   Linen 
Co.,  92  Fed.  Rep.  391. 

27.  Chambers  Bros.  Co.  r.  Penfield,  not  reported.  Appealed 
from  the  Circuit  Court  of  the  United  States  for  the  Northern 
District  of  Ohio.  Decree  affirmed  as  to  claim  24  of  patent  No. 
297,671.     (C.  C.  A.,  6th  Cir.     Mar.  7,  1899.) 

Taft,  J.]     *  Penfield  1-.  Chambers  Bros.  Co.,  92  Fed.  Rep.  630. 

28.  Loewenbach  v.  Hake-Stirn  Co.,  not  reported.  Appealed 
from  the  Circuit  Court  of  the  United  States  for  the  Eastern  Dis- 
trict of  Wisconsin.  Decree  dismissing  bill  affirmed.  (C.  C.  A., 
7th  Cir.     Feb.  23,  1899.) 

Per  Curiam.]      *  Loewenbach  v.  Hake-Stirn  Co.,  92  Fed.  Rep. 
661. 

29.  Kelly  fi  al.  v.  Springfield  Ry.  Co.  etal,  81  Fed.  Rep.  617. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Southern  District  of  Ohio,  Western  District.  Decree  dismissing 
the  bill  affirmed.      (C.  C.  A.,  6th  Cir.     Mar.  7,  1899.) 

Taft,  J.]     ^  Kelly  d  al.  v.  Springfield   Ry.  Co.  etal,  92  Fed. 
Rep.  614. 

30.  E.  Ingraham  Co.  v.  E.  N.  Welch  Mfg.  Co.,  87  Fed.  Rep. 
1000.  Sand.  Pat.  Dig.  1898,  106,  107.  Appealed  from  the 
Circuit  Court  of  the  United  States  for  the  District  of  Connecticut. 
Decree  of  the  Circuit  Court  affirmed.  (C.  C.  A.,  2d  Cir.  Mar. 
1,  1899.) 

Per  Curiam.]     *E.   Ligraham  Co.  v.  E.  N.  Welch  Mfg.  Co. 
etal.,  92  Fed.  Rep.  1019. 

31.  Wm.   Mumsen  &  Sons  v.   Manitowoc  Pea-Packing  Co., 


78  DECISIONS    OF    THE    FEDERAL    COURTS. 

not  reported.     Appealed  from  the  Circuit  Court  of  the  United 
States  for  the  Eastern  District  of  Wisconsin.     Order  of  the  Cir- 
cuit Court  affirmed.      (C.  C.  A.,  7th  Cir.     Apr.  11,  1899.) 
Woods,  J.]     *  Manitowoc  Pea-Packing  Co.  v.  Wm.  Mumsen  & 
Sons,  93  Fed.  Rep.  196. 

32.  Pahner  v.  Curnen  et  al,  84  Fed.  Rep.  829.  Appealed 
from  the  Circuit  Court  of  the  United  States  for  the  Southern 
District  of  New  York.  Decree  of  Circuit  Court  affirmed.  (C.  C. 
A.,  2d  Cir.     Mar.  1.  1899.) 

Per  Curiam.]     *Pahiier  v.  Curnen  et  al,  93  Fed.  Rep.  464. 

33.  Sarrazin  v.  W.  R.  Irby  Cigar  &  Tobacco  Co.  Lim., 
not  reported.  In  Error  to  the  Circuit  Court  of  the  United 
States  for  the  Eastern  District  of  Louisiana.  Judgment  of  the 
Circuit  Court  affirmed.  (C.  C.  A.,  5th  Cir.  Apr.  11,  1899.) 
Pardee,  J.]     *  Sarrazin  v.  W.   R.   Irby  Cigar  &  Tobacco  Co, 

Lim.,  93  Fed.  Rep.  624. 

34.  Richardson  v.  D.  M.  Osborne  &  Co.  et  al,  82  Fed.  Rep. 
95.     Appealed  from  the  Circuit  Court  of  the  United  States  for 
the  Northern   District  of  New  York.      Decree  of  the  Circuit 
Court  affirmed.      (C.  C.  A.,  2d  Cir.     Apr.  4,  1899.) 
Shipman,  J.]     *  Richardson  v.  D.  M.  Osborne  &  Co.  et  al,  93 

Fed.  Rep.  828. 

35.  Warren  y.  Casey  etal,  91  Fed.  Rep.  653.  Appealed  from 
the  Circuit  Court  of  the  United  Stat?s  for  the  Eastern  District 
of  Pennsylvania.  Decree  of  the  court  below  that  the  charge  of 
infringement  had  not  been  made  out,  affirmed.  (C.  C.  A. 
May  1,  1899.) 

KiRKPATRiCK,  J.]     *  Warren  v.  Casey  et  al,  93  Fed.  Rep.  963. 

36.  Christy  et  al  v.  Hygeia  Pneumatic  Bicycle  Saddle  Co. 
etal,  87  Fed.  Rep.  902.  Appealed  from  the  Circuit  Court  of 
the  United  States  for  the  District  of  Maryland.  Decree  dis- 
missing the  bill  affirmed.  (C.  C.  A.,  4th  Cir.  May  2,  1899.) 
GoFF,  J.]     *  Christy  et  al  v.  Hygeia  Pneumatic  Bicycle  Saddle 

Co.  etal,  93  Fed.  Rep.  965. 

37.  Ryan  v.  Runyon  et  al,  not  reported.  Appealed  from 
the  Circuit  Court  of  the  United  States  for  the  District  of  New 


DECISIONS   OF   THE   FEDERAL   COURTS.  79 

Jersey.      Decree  of  the  Circuit  Court  ailirmed.       (C.    C.    A., 
3dCir.     May  4,  1899.) 

AcHESON,  J.]     *Ryan  v.  Runyoii  et  (iL,  93  Fed.  Rep.  970. 

38.  Briggs  v.  Duell,  Commissioner  of  Patents,  87  Fed.  Rep, 
479.  Appealed  from  the  Circuit  Court  of  the  United  States  for 
the  District  of  Connecticut.  Decree  dismissing  the  bill  afTirmed. 
(C.  C.  A.,  2d  Cir.     Apr.  4,  1899.) 

Lacombe,  J.]  *  Briggs  v.  Duell,  Com.  of  Patents,  9o  Fed. 
Rep.  972;  87  0.  G.  1077. 

39.  Sarrazin  v.  Augustus  Craft  Co.,  Lim.  In  error  to  the 
Circuit  Court  of  the  United  States  for  the  Eastern  District  of 
Louisiana.  The  pleadings,  rulings  and  other  questions  involved 
in  this  case  are  the  same  as  those  involved  in  Sarrazin  v. 
Tobacco  Co.  93  Fed.  Rep.  and  for  the  reasons  therein  stated, 
the  judgment  of  the  Circuit  Court  is  affirmed.  (C.  C.  A.,  5th 
Cir.     Apr.  11,   1899.) 

Pardee,  J.]     *  Sarrazin  v.  Augustus  Craft  Co.  ct  ciL,  93  Fed 
Rep.  988. 

40.  Overweight  Counterbalance  Elevator  Co.  v.  Improved 
Order  of  Red  Men's  Hall  Association  of  San  Francisco,  86  Fed. 
Rep.  338;  Sand.  Pat.  Dig.  '98,  46,  47.  In  error  from  the  Cir- 
cuit Court  of  the  United  States  for  the  Northern  District  of  Cal- 
ifornia. Judgment  of  the  Circuit  Court  affirmed.  (C.  C.  A., 
9th  Cir.     Feb.  13,  1899.) 

Hawley,  J.]  *  Overweight  Counterbalance  Elevator  Co.  v. 
Improved  Order  of  Red  Men's  Hall  Associ- 
ation of  San  Francisco,  94  Fed.  Rep.  155. 

41.  Sarrazin  v.  Preston  et  al.  In  error  to  the  Circuit  Court  of 
the  United  States  for  the  Eastern  District  of  Louisiana.  For 
the  reasons  given  in  Sarrazin  v.  W.  R.  Irby  Tobacco  Co.,  93 
Fed,  Rep.  624,  the  judgment  of  the  Circuit  Court  is  affirmed. 
(C.  C.  A.,  5th  Cir.     June  1,  1899.) 

Per  Curiam.]     *  Sarrazin  v.  Preston  et  al,  94  Fed.  Rep.  1023. 

42.  Blakey  et  al.  v.  Nat'l  Mfg.  Co.  et  al.  Appealed  from  the 
Circuit  Court  of  the  United  States  for  the  Western  District  of 
Pennsylvania.     Decree  of  the  lower  court  denying  preliminary 


80  DECISIONS    OF   THE    FEDERAL    COURTS. 

injunction  affirmed  for  the  reason  that  infringement  was  not 
clearly  established.     (C.  C.  A.,  3d  Cir.     June  1,  1899.) 
Dallas,  J.]     *  Blakey  et  al.  v.   Nat'l  Mfg.  Co.,  95  Fed.  Rep. 
136. 

43.  United  States  Repair  &  Guaranty  Co.  et  al.  v.  Standard 
Paving  Co.,  87  Fed.  Rep.  339.  Appealed  from  the  Circuit 
Court  of  the  United  States  for  the  Northern  District  of  New 
York.  Decree  of  lower  court  affirmed.  (C.  C.  A.,  2d  Cir. 
May  25,  1899.) 

Shipman,  J.]      *  United  States  Repair  &  Guaranty  Co.  et  al.  v. 
Standard  Paving  Co.,  95  Fed.  Rep.  137. 

44.  Nelson  et  al.  v.  A.  D.  Farmer  &  Son  Type  Founding  Co., 
91  Fed.  Rep.  418.  Appealed  from  the  Circuit  Court  of  the 
United  States  for  the  Southern  District  of  New  York.  Decree 
of  lower  court  affirmed  in  the  main  but  modified  as  to  several 
of  the  claims  in  question.  (C.  C.  A.,  2d  Cir.  May  25,  1899.) 
Shipman,  J.]     *  Nelson  et  al.   v.    A.    D.    Farmer  &  Son  Type 

Founding  Co.  et  al,  95  Fed.  Rep.  145. 

45.  Western  Electric  Co.  v.  Millheim  Electric  Tel.  Co.  et  ed., 
88  Fed.  Rep.  505;  Sand.  Pat.  Dig.,  1898,  5,  6,  116.  Appealed 
from  the  Circuit  Court  of  the  United  States  for  the  Western 
District  of  Pennsylvania.  Decree  of  lower  court  affirmed.  (C. 
C.  A.,  3d  Cir.      June  8,  1899.) 

KiRKPATRicK,  J.]     =^ Millheim  Electric  Tel.  Co.  et  al.  v.  Western 
Electric  Co.,  95  Fed.  Rep.  152. 

46.  Cushman  Paper  Box  Mach.  Co.  v.  Godclard  et  al,  90  Fed. 
Rep.  727;  Sand.   Pat.    Dig.  1899.     Appealed  from  the  Circuit 
Court  of  the  United  States  for  the  District  of  Massachusetts. 
Decree  affirmed.     (C.  C.  A.,  1st  Cir.     June  1,  1899.) 
Putnam,  J.]     *  Cushman  Paper  Box  Mach.  Co.  v.  Goddard  etal. 

88  0.  G.  2410,  95  Fed.  Rep.  664. 

47.  Sprague  Electric  Ry.  &  Motor  Co.  v.  Nassau  Electric  Ry. 
Co.,  91  Fed.  Rep.  786.  Sand.  Pat.  Dig.  1899.  Appealed  from 
the  Circuit  Court  of  the  United  States  for  the  Eastern  District 
of  New  York.  The  part  of  the  order  den3'ing  an  injunction  is 
affirmed;  the  part  granting  an  injunction  is  reversed.  (C.  C. 
A.,  2d  Cir.     May  25,  1899.) 

Per  Curiam.]     *  Sprague  Electric  Ry.  &  Motor  Co.  v.  Nassau 
Electric  Ry.  Co.,  95  Fed.  Rep.  821. 


DECISIONS   OF   THE    FEDERAL   COURTS.  81 

48.  MacColl  v.  Knowles  Loom  W'ks,  87  Fed.  Rop.  727,  Sand. 
Pat.  Dig.  1898,  117.  Appealed  from  the  Circuit  Court  of  the 
United  States  for  the  District  of  Massachusetts.  Decree  affirmed. 
(C.  C.  A.,  1st  Cir.     May  31,  1899.) 

Colt,  J.]     *  MacColl  v.  Knowles  Loom  W'ks,  95  Fed.  Rep.  982. 

49.  MacColl  v.  Crompton  Loom  W'ks,  87  Fed.  Rep.  731. 
Appealed  from  the  Circuit  Court  of  tlie  United  States  for  the 
District  of  Massachusetts.  Decree  aflirmed.  (C.  C.  A.,  1st 
Cir.     May  31,  1899.) 

Colt,  J.]     *  MacColl  v.  Crompton  Loom  ^^^'ks,  95  Fed.   Rep. 
987. 

50.  Bass  et  al.  v.  Henry  Zeltner  Brewing  Co.,  87  Fed.  Rep. 
468.  Appealed  from  the  Circuit  Court  of  the  United  States  for 
the  Southern  District  of  New  York.  Decree  affirmed  upon 
opinion  of  court  below.  (C.  C.  A.,  2d  Cir.  Mar.  17,  1899.) 
Per  Curiam.]     *Bass  et  al.  v.  Henry  Zeltner  Brewing  Co.,  95. 

Fed.  Rep.  1006. 

51.  Flomerfelt  v.  Newwitter  cUJ. ,  88  Fed.  Rep.  696.  Sand. 
Pat.  Dig.  1898,  6,  30.  Appealed  from  the  Circuit  Court  of  the 
United  States  for  the  Southern  District  of  New  York.  Decree 
affirmed  on  opinion  of  court  below.  (C.  C.  A.,  2d  Cir.  Mar. 
15,  1899.) 

Per  Curiam!]     *Flomerfelt  v.  NeAvwitter  et  al,  95  Fed.  Rep. 
1006. 

52.  Wm.  Rogers  ^Ifg.  Co.  v.  Rogers,  84  Fed.  Rep.  639.  Ap- 
pealed from  the  Circuit  Court  of  the  United  States  for  the  East- 
ern District  of  New  York.  Order  denying  preliminary  injunc- 
tion affirmed.  Wallace,  C.  J.  concurring  in  opinion  of  court 
below  and  Shipman,  C.  J.  dissenting.  (Before  Wallace  and 
Shipman,  C.  Js.  ) 

Per  Curiam.]     *Wm.    Rogers  Mfg.    Co.    v.    Rogers,   95  Fed. 
Rep.  1007. 

53.  Thompson  el  al.  v.  N.  T.  Bushnell  Co.,  88  Fed.  Rep.  81. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
District  of  Connecticut.  Decree  affirmed.  Wallace,  J.  dis- 
senting.    (C.  C.  A.,  2d  Cir.     May  25,  1899.) 

Lacombe,  J.]     *  Thompson  et  al.   v.   N.   T.   Bushnell  Co.,  96 
Fed.  Rep.  238. 
6 


82  DECISIONS    OF   THE   FEDERAL   COURTS. 

54.  Way  V.  McClarin,  91  Fed.   Rep.  GG3.     Sand.    Pat.    Dig., 
1899.     Appealed  from  the  Circuit  Court  of  the  United  States 
for  the  Eastern  District  of  Pennsylvania.      Decree  afHrnied  and 
appeal  dismissed.      (C.  C.  A.,  3d  Cir.     May  9,  1899.) 
BuFFiNGTON,  J.]     *  Way  t'.  McChuin,  96  Fed.  Rep.  416. 

55.  Ball  &  Socket  Fastener  Co.  v.  C.  A.  Edgarton  Mfg.  Co. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
District  of  Massachusetts.  Decree  dismissing  bill  affirmed. 
(C.  C.  A.,  1st  Cir.     May  26,  1899.) 

Putnam,  J.]     "-^  Ball  &  Socket  Fastener  Co.  v.  C.  A.  Edgarton 
Mfg.  Co.,  96  Fed.  Rep.  489. 

56.  Union  Switch  &  Signal  Co.  d  al.  v.  Philadelphia  &  R.  R. 
■Co.  et  at.,  87  Fed.  Rep.  906.  Appealed  from  the  Circuit  Court 
•of  the  United  States  for  the  Eastern  "District  of  Pennsylvania. 
Decree  affirmed.  (C.  C.  A.,  3d  Cir.  Sept.  13,  1899.) 
KiRKPATRicK,  J.]  ^  Union  Switch  &  Signal  Co.  et  al.  v.  Phila- 
delphia &  R.  R.  Co.,  96  Fed.  Rep.  761. 

57.  Westinghouse  Air-Brake  Co.  v.  New  York  Air-Brake  Co. 
et  al,  87  Fed.  Rep.  882.  Appealed  from  the  Circuit  Court  of 
the  United  States  for  the  Southern  District  of  New  York.  De- 
cree of  the  Circuit  Court  affirmed.  Lacombe,  J.,  dissenting. 
(C.  C.  A.,  2d  Cir.     .July  18,  1899.) 

Shipman,  J.]      *  Westinghouse  Air-Brake  Co.  v.  New  York  Air- 
Brake  Co.  et  al,  96  Fed.  Rep.  991. 

58.  Buzzell  v.  Reynolds,  not  reported.  Appealed  from  the 
Circuit  Court  of  the  United  States  for  the  District  of  Massa- 
chusetts. Decree  of  the  Circuit  Court  affirmed.  (C.  C.  A.,  1st 
Cir.     Sept.  14,1899.) 

Colt,  J.]     *  Reynolds  v.  Buzzell,  96  Fed.  Rep.  997. 

59.  C.  &  A.  Potts  &  Co.  V.  Creager  et  a/.,  77  Fed.  Rep.  454. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Southern  District  of  Ohio.  Decree  of  the  Circuit  Court  dismiss- 
ing the  bill  as  to  the  patent  to  Potts,  No.  368,898,  affirmed. 
(C.  C.  A.,  6th  Cir.     Oct.  23,  1899.) 

Taft,  J.]     =K,1.  &  A.   Potts  &  Co.  V.  Creager  et  al,  97  Fed. 
Rep.  78. 

60.  Westinghouse  Electric  &  Mfg.  Co.   v.   Triumph  Electric 


DECISIONS    OF   THE    FEDEHAI,    COURTS.  83 

Co.,  not  reported.  Ap})ea]e(l  from  tlie  Circuit  Court  of  the 
United  States  for  the  Soutliern  District  of  Ohio.  Decree  dis- 
missing bill  affirmed.     (C.  C.  A.,  Gth  Cir.     Oct.  3,  1897.) 

Taft,   J.]     *  Westinghouse  Electric   &   ^Nlfg.    Co.    v.   Triumph 
Electric  Co.,  97  Fed.  Rep.  99. 

61.  McBride  v.  Kingman  ct  ah  Same  v.  Sickels  el  al.  Same 
V.  Randall  et  al.  Same  r.  Ainsworth  H  at.,  72  Fed.  Rep.  908. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Southern  District  of  Iowa.  Decree  dismissing  bills  adlrnied. 
(C.  C.  A.,  8th  Cir.     Oct.  9,  1899.) 

Sanborn,  J.]  *  McBride  v.  Kingman  cf  al.  Same  v.  Sickels  et 
ul.  Same  r.  Randall  ct  al.  Same  v.  Ains- 
wortl-i,e<  al,  97  Fed.  Rep.  217. 

62.  Coburn  Trolley-Track  Co.  r.  Chandler  et  al.,  91  Fed.  Rep. 
260.  Sand.  Pat.  Dig.  1899.  Appealed  from  the  Circuit  Court 
of  the  United  States  for  the  District  of  Massachusetts.  Decree 
affirmed.      (C.  C.  A.,  1st  Cir.     Sept.  14,  1899.) 

Putnam,  J.]      *  Coburn  Trolley-Track   ]Mfg.   Co.  v.  Chandler  et 
al.,  97  Fed.  Rep.  333. 

63.  Kenney  V.  Bent,  91  Fed.  Rep.  259.  Sand.  Pat.  Dig.  1899. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
District  of  INIassachusetts.  Decree  affirmed.  (C.  C.  A.,  1st  Cir. 
Sept.  14,  1899.) 

Putnam,  J.]     ^iaCenney  r.  Bent,  97  Fed.  Rep.  337. 

64.  Kisinger-Ison  Co.  v.  Bradford  Belting  Co.,  n(»t  reported. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Southern  District  of  Ohio,  Western  Division.  Decree  affirmed 
as  to  the  Kisinger  patent.      (C.  C.  A.,  6th  Cir.     Oct.  3,  1899.) 

Taft,  J.]     *  Kisinger-Ison  Co.  r.  Bradford  Belting  Co.,  97  Fed. 
Rep.  502. 

II.  Reversed  on  Appeal. 

1.  Thomas  Robeits  Stevenson  Co.  r.  ]McFasscll,  88  Fed.  Rep. 
278.  Sand.  Pat.  Dig.  1898,  Ho.  Appealed  from  th(>  Circuit 
Court  of  the  United  States  for  the  Eastern  District  of  Pennsyl- 
vania.     Decree  of  the  Circuit  Court  I'eversed,  and  the  case  re- 


84  DECISIONS    OF   THE    FEDERAL    COURTS. 

mandptl  to  that  court  with  direction  to  enter  a  decree  in  favor  of 
the  complainant  in  the  bill    (C.  C.  A.,  3d  Cir.    Nov.  28,  1898.) 
AcHEsoN,  J.]     *  Thomas  Roberts  Stevenson  Co.  v.   McFassell, 
90  Fed.  Rep.,  707. 

2.  Pahner  Pneumatic  Tire  Co.  v.  Lozier,  84  Fed.  Rep.  659. 
Sand.  Pat.  Dig.  '98,  36,  95.  Appealed  from  the  Circuit  Court 
of  the  United  States  for  the  Eastern  Division' of  the  Northern 
District  of  Ohio.  Decree  of  the  Circuit  Court  reversed,  and  the 
cause  remanded,  Avith  direction  to  dismiss  the  bill  and  deny  the 
relief  prayed  for  by  the  ansAver,  for  the  reason  that  the  court 
finds  that  the  respective  patents  alleged  in  the  bill  to  be  interfer- 
ing patents  are  void  in  res'pect  to  the  claims  in  controversy,  for 
lack  of  invention.  (C.  C.  A.,  6th  Cir.  Dec.  5,  1898.) 
Severexs,  J.]     ^^  Palmer  Pneumatic  Tire  Co.  v.  Lozier,  90  Fed. 

Rep.  732. 

3.  Hugbes  et  ol.  v.  American  Box-Mach.  Co.,  not  reported. 
Appealed  from  the  Circuit  Court  of  the  United  States  for 
the  Southern  District  of  New  York.  Interlocutory  order  grant- 
ing an  injunction  ijendente  lite  reversed,  with  costs.  Held^  also, 
that  the  patent  in  suit  was  not  infringed.  (C.  C.  A.,  2d  Cir. 
Dec.  7  ,  1898.) 

Shipman,  J.]     *  American  Box-Mach.  Co.  v.  Hughes  etah,  91 
Fed.  Rep.  147. 

4.  Stuart  v.  F.  G.  Stewart  Co.  et  al,  85  Fed.  Rep.  778.  Ap- 
pealed from  the  Circuit  Court  of  the  United  States  for  the  North- 
ern District  of  Illinois.  Decree  of  the  Circuit  Court  reversed 
and  the  cause  remanded  with  directions  to  enter  a  decree  in 
favor  of  the  complainant  (appellant)  pursuant  to  the  prayer  of 
the  bill.     (C.  C.  A.,  7th  Cir.     Jan.  3,  1899.) 

Jenkins,  J.]     *  Stuart  v.  F.  G.  Stewart  Co.  et  nl,  91  Fed.  Rep. 
243. 

5.  Allen  v.  City  of  Boston,  not  reported.  In  error  to  the 
Circuit  Court  of  the  United  States  for  the  District  of  Massa- 
chusetts. Judgment  of  the  Circuit  Court  reversed  and  the  case 
remanded  to  that  court  with  directions  to  set  aside  the  verdict 
and  proceed  thereafter  according  to  law  unless  the  plaintiff  be- 
low shall,  within  such  time  as  that  court  may  direct,  remit  all 


DECISIONS    OF   THE    FEDERAL   COURTS.  85 

damages  in  excess  of  one  dollar.      (C.  C.  A.,  1st  Cir.      Dec.  9, 

1898.) 

Putnam,  J.]     *  City  of  Boston  r.  Allen,  91  Fed.  Kei..  248. 

6.  Joliet  Mfg.  Co.  V.  Sandwich  Enterprise  Co.,  not  reported. 
Appeal  from  the  Cin^uit  Court  of  the  United  States  for  the 
Northern  District  of  Illinois,  Northern  Division.  Decree  re- 
versed and  cause  remanded  with  directions  to  the  court  Ijelow 
to  dismiss  the  bill.  (C.  C.  A.,  7th  Cir.  Jan.  8,  1899.) 
BuNN,  J.]     *  Sandwich  Enteri)rise  Co.  ct  al.  v.  Joliet.  Mfg.  Co., 

91  Fed.  Rep.  254. 

7.  Pelzer  v.  Horn  &  Brannen  Mfg.  Co.,  87  Fed.  Rep.  869. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Eastern  District  of  Pennsylvania.  Order  of  the  Circuit  Court 
granting  preliminary  injunction  reversed  and  the  cause  re- 
manded for  further  proceedings.  (C.  C.  A.,  3d  Cir.  Dec.  21, 
1898.) 

AcHESON,  J.]      *IIorn  &  Brannen  ^Nlfg.  Co.  v.  Pelzer,  91  Fed. 
Rep.  665. 

8.  Heap  v.  Greene  et  al. ,  75  Fed.  Rep.  405.  Appealed  from  the 
Circuit  Court  of  the  United  States  for  the  District  of  Massachu- 
setts. Decree  of  the  Circuit  Court  dismissing  the  bill  reversed 
and  the  case  remanded  to  that  court  with  direction  to  enter  a  de- 
cree in  favor  of  the  complainant.  (C.  C.  A.,  1st  Cir.  Jan.  30, 
1899.) 

Brow.n,  J.]     =^-Heap  v.  Greene  et  ai,  91  Fed.  Rep.  792. 

9.  Centaur  Co.  v.  Neathery,  not  reported.  Appealed  from 
the  Circuit  Court  of  the  United  States  for  the  Eastern  District  of 
Texas.  Order  of  Circuit  Court  refusing  preliminary  injunction 
reversed,  and  the  cause  remanded  with  instructions  to  grant 
same.     (C.  C.  A.  5th  Cir.     Dec.  13,  1898.) 

SwAYNE,  J.]     *  Centaur  Co.  v.  Neathery,  91  Fed.  Rep.  891. 

10.  Centaur  Co.  v.  Hughes  Bros.  Mfg.  Co.,  not  reported. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Northern  District  of  Texas.  Order  of  Circuit  Court  refusing 
preliminary  injunction  reversed,  and  the  cause  remanded  with  in- 
structions to  grant  same.  (C.  C.  A.,  5th  Cir.  Dec.  18,  1898.) 
SwAYNE,  J.]     *  Centaur  Co.  v.  Hughes  Bros.  Mfg.  Co.,  91  Fed. 

Rep.  901. 


86  DECISIONS    OF   THE    FEDERAL    COURTS. 

11.  Centaur  Co.  v.  Reineckt',  not  reported.  Appealed  frona 
the  Circuit  Court  of  the  United  .States  for  the  Northern  District 
of  Texas.  Order  of  the  Circuit  Court  refusing  prehminary 
injunction  reversed  and  the  cause  remanded  with  instructions 
to  grant  same.  (C.  C.  A.,  5th  Cir.  Dec.  13,  1898.) 
SwAY.\E,  J.]      *  Centaur  Co.  v.  Reinecke,  91  Fed.  Rep.  1001. 

12.  Saxlehner  v.  Neilson,  88  Fed.  Rep.  71.  Appealed  from 
the  Circuit  Court  of  the  United  States  for  the  Southern  District  of 
New  York.  Decree  of  the  Circuit  Court  reversed  and  the  cause 
remitted  with  instructions  to  dismiss  the  hill.  (C.  C.  A.,  2d 
Cir.     Jan.  5,  1899.) 

Per  Curiam.]     *  Saxlehner  v.  Neilson,  91  Fed.  Rep.  1004. 

13.  Beach  r.  Hohhsei  ni,  82  Fed.  Rep.  916.  Appealed  from 
the  Circuit  Court  of  the  United  States  for  the  District  of  Massa- 
chusetts. Decree  of  the  Circuit  Court  reversed  as  to  claims  1, 
2  and  3,  and  affirmed  as  to  claim  6,  and  the  cause  remanded 
with  directions  to  proceed  in  conformity  with  this  opinion.  (C. 
C.  A.,  1st  Cir.  Feh.  13,  1899.) 

Colt,  J.]      *  Beach  v.  Hobbs  et  al. — Holjhs  fi  al.  v.  Beach,  92 
Fed.  Rep.  146. 

14.  American  Graphophone  Co.  r.  Nat'l  Gramophone  Co. 
etal.^  90  Fed.  Rep.,  824.  Appealed  from  the  Circuit  Court  of 
the  United  States  for  the  South(n-n  District  of  New  York.  Order 
granting  an  injunction  pendente  Utc  reversed.  (C.  C.  A.,  2(1  Cir.) 
Shipman,  J.]  *  American  Grai)h()phone  Co.  v.  Nat'l  Gramo- 
phone Co.  et  al. ,  92  Fed.  Rep.  364. 

15.  Hart  &  Hegeman  IMfg.  Co.  v.  Anchor  Electric  Co.  et  al, 
82  Fed.  Rep.  911.  Appealed  from  the  Circuit  Court  of  the 
United  States  for  the  District  of  Massachusetts.  Decree  reversed; 
and  case  remanded  for  further  ])roceedings.  (C.  C.  A.,  1st  Cir. 
Mar.  13,  1899.) 

Lowell,  J.]     *Hart  <k  Hegeman  Mfg.  Co.  v.  Anchor  Electric 
Co.  etal,  92  Fed.  Rep.  657. 

16.  Chaml)ers  Bros.  Co.  v.  Penfield,  not  reported.  Ap- 
pealed from  the  Circuit  Court  of  the  United  States  for  the 
Northern  District  of  Ohio.  Decree  reversed  as  to  claims  7,  9, 
10,  11   and  12  of  patent  No.  362,204,  claim  2  of  patent  No. 


DECISIONS   OF   THE    FEDERAL   COURTS.  87 

297,675,  claim   No.  G  of  patent  No.  207, ()7o,  and  claim   1    of 
patent  No.  275,467  on  the  ground  that  the  claims  are  invalid 
for  want  of  invention.      (C.  C.  A.,  6th  Cir.     "Shn:  7,  1899.) 
Taft,  J.]    *Pen(ield  r.  Chambers  Bros.  Co.,  92  Fed.  Rep.  630. 

17.  Palmer  ct  al.  r.  John  E.  Brown  Mfg.  Co.,  92  Fed.  Rep. 
925.  Appealed  from  the  Circuit  Court  of  the  United  States  for 
the  District  of  Massachusetts.  Decree  of  Circuit  Court  reversed 
and  cause  remanded  with  direction  to  enter  a  decree  in  favor  of 
complainants  sustaining  the  validity  of  claims  9,  10,  14,  16,  18, 
19,  22  and  24  of  com{)lainants'  patent  No.  308,  9^1,  Dec.  9,  1884, 
adjudging  that  said  claims  have  heen  infringed,  and  other  relief 
prayed.      (C.  C.  A.,  1st  Cir.     Mar.  16,  1899.) 

Browx,  J.]     '^=  Palmer  et  al.   r.   John  E.   Brown  Mfg.   Co.,   92 
Fed.  Rep.  925. 

18.  Dodge  et  al.  v.  Fulton  Pulley  Co.  et  al,  not  reported     Ap- 
pealed  from   the    Circuit   Court  of   the  United  States  for  the 
Northern  District  of  New  York.     Order  granting  a  jireliminary 
injunction  reversed.      (C.  C.  A.,  2d  Cir.     Dec.  7,  1898.) 
Lacombe,  J.]     *  Dodge  et  al.    r.   Fulton  Pulley  Co.   et  a/.,  92 

Fed.  Rep.,  995. 

19.  Peck,  Stow  ct  Wilcox  Co.  v.  FvayetaL,  88  Fed.  Rep.  784. 
Sand.  Pat.  Dig.  1898,  47.  Appealed  from  the  Circuit  Court  of 
the  United  States  for  the  District  of  Connecticut.  Order  grant- 
ing preliminary  injunction  reversed.  (C.  C.  A.,  2d  Cir.  Nov. 
15,  1898.) 

Per  Curiam.]     =^Peck,  Stow  &  Wilcox  Co.  v.  Fray  et  a!.,  92 
Fed.  Rep.  1021. 

20.  Batcheller  r.  Thomson  (2  cases).  Thomson  r.  Batchcller, 
86  Fed.  Rep.  630.  Sand.  Pat.  Dig.  1898,  152.  Appealed  from 
the  Circuit  Court  of  the  United  States  for  the  Southern  District 
of  New  York.  Decrees  of  the  Circuit  Court  reversed.  (C.  C. 
A.,  2  Cir.      April  4,  1899.) 

SriiPMAX,  J.]      -''^  Batclieller  ?■.  Thomson  (2  cases). 

Thomson  v.  Batcheller,  93  Fed.  Rep.  660. 

21.  Whcatfield  v.  Reubens  et  aJ.,  not  reported.  Appealed 
from  the  Circuit  Court  of  the  United  States  for  the  Northern 
District  of  Illinois.     Order  granting  a  preliminary   injunction 


88  DECISIONS    OF   THE    FEDERAL   COURTS. 

reversed,  as  the  patent  sued  on  is  invalid.      (C.  C.  A.,  7th  Cir. 

Feb.  7,  1899.) 

Woods,  J.]     *  Rubens  et  al.  v.  Wheatfield,  93  Fed.  Rep.  677. 

22.  Thompson  v.  Tliird  Avenue  Traction  Co.  et  al,  89  Fed. 
Rep.  321.  Appealed  from  the  Circuit  Court  of  the  United 
States  for  the  Western  District  of  Pennsylvania.  Decree  of  the 
Circuit  Court  reversed  and  the  cause  remanded  to  that  court 
with  direction  to  enter  a  decree  in  favor  of  complainant. 
(C.  C.  A.,  3d  Cir.     May  1,  1899.) 

AcHESON,  J.]     *  Thompson  v.  Third  Avenue  Traction  Co.  et  al, 
93  Fed.  Rep.  824. 

23.  Simonds  Rolling-Machine  Co.  v.  Hathorn  Mfg.  Co.,  90 
Fed.  Rep.  201,  Sand.  Pat.  Dig.  1899.  Ai)pealed  from  the  Cir- 
cuit Court  of  the  United  States  for  the  District  of  Maine.  De- 
cree of  the  Circuit  Court  modified  as  to  requiring  an  accounting 
by  each  individual  defendant.  (C.  C.  A.,  1st  Cir.  Apr.  25, 
1899.) 

Colt,  J.]  *  Simonds  Rolling-Mach.  Co.  v.  Hathorn  INIfg.  Co. 
et  al.  Hathorn  Mfg.  Co.  et  al.  v.  Simonds  Roll- 
ing-Mach. Co.,  93  Fed.  Rep.  958. 

24.  Warren  v.  Casey  et  al,  91  Fed.  -Rep.  653,  Sand.  Pat. 
Dig.  1899.  Appealed  from  the  Circuit  Cburt  of  the  United 
States  for  the  Eastern  District  of  Pennsylvania.  Decree  of  the 
court  below  holding  the  patent  in  suit  invalid  reversed.  (C.  C. 
A.     May  1,  1899.) 

KiRKPATRiCK,  J.]     =^  Warren  v.  Casey  et  al,  93  Fed.  Rep.  963. 

25.  Tower  v.  Eagle  Pencil  Co.,  90  Fed.  Rep.  662.  Appealed 
from  the  Circuit  Court  of  the  United  States  for  the  Southern 
District  of  New  York.  Decree  of  lower  court  reversed  with  in- 
structions to  dismiss  the  l)ill.  (C.  C.  A.,  2d  Cir.  Apr.  4,  1899.) 
Wallace,  J.]     *  Tower  v.  Eagle  Pencil  Co.,  94  Fed.  Rep.  361. 

26.  Nat'l  Cash  Register  Co.  v.  Leland  et  al.  Same  v.  Wright 
et  aZ.,  77  Fed.  Rep.  242.  In  error  to  the  Circuit  Court  of  the 
United  States  for  the  District  of  INIassachusetts.  The  judgment 
of  the  Circuit  Court  is  reversed,  the  verdict  set  aside  and  the 
case  remitted  to  that  court  for  further  proceedings  in  accordance 
with  law.      (C.  C.  A.,  1st  Cir.     Apr.  12,  1899.) 

Lowell,  J.]     *  Nat'l  Cash  Register  Co.  v.  Leland  et  al.     Same 
V.  Wright  et  al,  94  Fed.  Rep.  502. 


DECISIONS   OF   THE    FEDERAL   COURTS.  89 

27.  Crosby  Steam  Gage  and  Valve  Co.  v.  Ashton  Valve 
Co.,  not  reported.  Appealed  from  the  Circuit  Court  of  the 
United  States  for  tlie  District  of  ^lassachusetts.  Decree  of  Court 
below  reversed  and  the  case  remanded  with  directions  to  dismiss 
the  bill.     (C.  C.  A.,  1st  Cir.     May  4,  1899.) 

Putnam,  J.]     *  Crosby  Steam  Gage  &  Valve  Co.  v.  Ashton  Valve 
Co.,  94  Fed.  Rep.  510. 

28.  Bundy  Mfg.  Co.  v.  Detroit  Time-Register  Co.,  not 
reported.  Appealed  from  the  Circuit  Court  of  the  United 
States  for  the  Eastern  District  of  Micliigan.  Decree  of  the  Cir- 
cuit Court  reversed,  and  case  remanded  with  directions  to  enter 
a  decree  finding  defendant  guilty  of  infringement  and  for  an 
injunction  and  account.  (C.  C.  A.,  6th  Cir.  May  2,  1899.) 
LuRTON,  J.]     *  Bundy  Mfg.  Co.  v.  Detroit  Time-Register  Co., 

94  Fed.  Rep.  524. 

29.  Elgin  Nat'l  Watch  Co.  v.  Illinois  Watch  Case  Co.  et  al, 
89  Fed.  Rep.  487.  Sand.  Pat.  Dig.  1898,  145.  Appealed  from 
the  Circuit  Court  of  the  United  States  for  the  Northern  District 
of  Illinois.  Decree  of  the  court  below  reversed  and  the  cause 
remanded  with  direction  to  dismiss  the  bill.  (C.  C.  A.,  7th 
Cir.,  June  6,  1899.) 

Jenkins,  J.]     *  Illinois  Watch  Case  Co.  et  al.  v.  Elgin  Nat'l 
Watch  Co.,  94  Fed.  Rep.  667.    87  0.  G.  2323. 

30.  Huntington  Dry  Pulverizer  Co.  et  al.  v.  Whitaker  Cement 
Co.  et  al,  89  Fed.  Rep.  323.  Sand.  Pat.  Dig.  1898,  43,  118. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
District  of  New  Jersey.  Decree  of  the  Circuit  Court  reversed 
and  cause  remanded  with  direction  to  dismiss  the  bill.  (C.  C.  A., 
3d  Cir.     July  6,  1899.) 

Dallas,  J.]     *  Whitaker  Cement  Co.  et  al.  v.  Huntington  Dry 
Pulverizer  Co.  et  al,  95  Fed.  Rep.  471. 

31.  Hartz  v.  Cleveland  Block  Co.,  not  reported.  Appealed 
from  the  Circuit  Court  of  the  United  States  for  the  Eastern 
Division  of  the  Northern  District  of  Ohio.  Decree  reversed. 
(C.  C.  A.,  0th  Cir.     June  0,  1899.) 

Lurton,  J.]     *  Hartz  ?-.  Cleveland  Block  Co.,  95  Fed.  Rep.  081. 

32.  Pelzer   v.    City,  of    Binghanipton    et    al.,    not    reported. 


90  DECISIONS    OF   THE    FEDERAL    COURTS. 

Appealed  from  the  Circuit  Court  of  tlie  Ignited  States  for  the 
Northern  District  of  New  York.  Order  denying  injunction  re- 
versed; cause  remanded  with  instructions  to  issue  order  of  in- 
junction ^ieurfenie //^c.  (C.  C.  A.,  2d  Cir.  Apr.  4,  1899.) 
Shipman,  J.]  *Pelzert'.  City  of  Binghampton  et  al,  95  Fed. 
Rep.  823." 

33.  Carr  r.  Bennett,  not  reported.  In  error  to  Circuit 
Court  of  tlie  United  States  for  the  Soutliern  District  of  New 
York.  Judgment  reversed.  (C.  C.  A.,  2d  Cir.  J ul}- 18,  1899.) 
Thomas,  J.]     -'-  Bennett  v.  Carr,  9(5  Fed.  Rep.  213. 

34.  Welsbach  Light  Co.  v.  Apollo  Incandescent  Gaslight  Co. 
et  al,  94  Fed.  Rep.  1005.  Sand.  Pat.  Dig.,  1899.  Appealed 
from  the  Circuit  Court  of  the  United  States  for  ths  Southern 
District  of  New  York.  Order  denying  preliminar}'  injunction 
reversed.     (C.  C.  A.,  2d  Cir.     Apr.  4,  1899.) 

Shipman,  J.]  *  Welsbach  Light  Co.  v.  Apollo  Incandescent 
Gaslight  Co.  et  al,  87  0.  G.  1784;  9(5  Fed. 
Rep.  332. 

35.  Carnegie  Steel  Co.  Lim.  v.  Cambria  Iron  Co.,  89  Fed. 
Rep.  721.  Sand.  Pat.  Dig.,  1898,  5,  11,  31,  116.  Appealed 
from  the  Circuit  Court  of  the  United  States  for  the  Western  Dis- 
trict of  Pennsylvania.  Decree  reversed  and  cause  remanded 
Avith  directions  to  dismiss  the  bill.  (C.  C.  A.,  3d  Cir.  Aug. 
21,  1899.) 

KiRKPATRicK,  J.]     *Caml)ria  Iron  Co.    r.   Carnegie  Steel  Co. 
Lim.,  96  Fed.  Rep.  850. 

36.  Williames  et  al  v.  McNeely  et  al,  64  Fed.  Rep.  766. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Eastern  District  of  Pennsylvania.  Decree  reversed.  (C.  C.  A., 
3d  Cir.     Oct.  4,  1899.) 

Bradford,  J.]     *  McNeely  et  al  r.  Williames  et  al. 

Williames  et  al.   v.    McNeely  ci  al,  96  Fed. 
Rep.  978. 

37.  C.  &  A.  Potts  &  Co.  V.  Creager  et  ah,  77  Fed.  Rep.  454. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Southern   District  of  Ohio.      Decree  dismissing  the  bill  as  to 


DECISIONS    OF    THE    FEDERAL    COURTS.  91 

the  Potts  putent  No.   322,398  reversed.      (C.    C.    A.,    Gtli   Cir. 
Oct.  23,  1899.) 

Taft,  J.]     *C.  &  A.    Potts  &  Co.   V.   Crcager  d  a/.,   97  Fed. 
Rep.  78. 

38.  Magic  Light  Co.  v.  Economy  Gas-Lamp  Co.,  not  reported. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Northern  Division  of  the  Northern  District  of  IlHnois.  Decree 
granting  prehminary  injunction  reversed,  and  cause  remanded 
■with  directions  to  dismiss  the  hill.  (C.  C.  A.,  7th  Cir.  Oct. 
3,  1899. ) 

Woods,  J.]     *  Magic  Light  Co.  i\  Economy  Gas-Lan)p  Co.,  97 
Fed.  Rep.  87. 

39.  Celluloid  Co.  v.  Arlington  Mfg.  Co.,  85  Fed.  Rep.  449. 
Sand.  Pat.  Dig.  1898,  6.  Appealed  from  the  Circuit  Court  of 
the  United  States  for  the  District  of  New  Jersey.  Decree  re- 
versed.    (C.  C.  A.,  3d  Cir.     Sept.  22,  1899.) 

Bradford,  J.]     ^^  Arlington  Mfg.  Co.  v.  Celluloid  Co.,  97  Fed. 
Rep.  91. 

40.  Kisinger-Ison  Co.  v.  Bradford  Belting  Co.,  not  reported. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Southern  District  of  Ohio,  Western  Division.  Decree  reversed 
as  to  the  Morrison  patent.  (C.  C.  A.,  6th  Cir.  Oct.  3,  1899.) 
Taft,  J.]     *  Kisinger-Ison  Co.  v.  Bradford  Belting  Co.,  97  Fed. 

Rep.  502. 

41.  Fenton  Metallic  Mfg.  Co.  v.  Office  Specialty  Mfg.  Co.,  12 
C.  A.  D.  C.  201.  Appealed  from  the  Court  of  Appeals  for  the 
District  of  Columbia.  Decree  of  the  court  l^elow  reversed  and 
case  remanded  with  directions  that  the  bill  be  dismissed. 
(Sup.  Ct.  U.  S.     May  15,  1899.) 

Brown,   J.]     ^^  Office  Specialty  Mfg.    Co.   v.    Fenton  INIetallic 
Mfg.  Co.,  87  0.  G.  1608. 

III.  Appeals  Dismissed. 

1.   Von  Emperger  v.  City  of  Detroit.     Appealed  from  the  Cir- 
cuit Court  of  the  United  States  for  the  Eastern  District  of  ]\Iich- 
igan.      Dismissed  for  failure  to  print  record.      (C.  C.  A.,  6th 
Cir.     Mar.  7,  1899.) 
*  Von  Euiperger  v.  City  of  Detroit,  92  Fed.  Rep.  1023. 


92  DECISIONS    OF    THE    FEDERAL   COURTS. 

2.  Western  Electric  Co.  v.  Citizens  Telephone  Co.,  89  Fed. 
Rep.  670.  Sand.  Pat.  Dig.,  1898,  121.  Appealed  from  the 
Circuit  Court  of  the  United  States  for  Western  District  of  Mich- 
igan. Dismissed  on  motion  of  appellant.  (C.  C.  A.,  6th  Cir. 
Mar.  27,  1899.) 

*  Western  Electric  Co.  v.  Citizens  Telephone  Co.  et  al,  92  Fed. 
Rep.  1023. 

3.  E.  T.  Burrowes  Co.  v.  Adams  &  Westlake  Co.  et  al ,  93 
Fed.  Rep.  462.  Sand.  Pat.  Dig.  1899.  Appealed  from  the 
Circuit  Court  of  the  United  States  for  the  District  of  Maine. 
Appeal  dismissed.     (C.  C.  A.,  1st  Cir.     Apr.  27,  1899.) 

Per  Curiam.]     *E.  T.  Burrowes  Co.  v.  Adams  &  Westlake  Co. 
etal,  93  Fed.  Rep.  987. 

4.  Welsbach  Light  Co.  v.  Rex  Incandescent  Light  Co.  et  al., 
87  Fed.  Rep.  477.  Sand.  Pat.  Dig.  1898,  124.  Appealed  from 
Circuit  Court  of  the  United  States  for  the  Southern  District  of 
New  York.  Appeal  dismissed  and  cause  remanded  to  the  Cir- 
cuit Court  with  instructions  to  entertain  another  motion  for  an 
injunction.      (C.  C.  A.,  2d  Cir.     Apr.  27,  1899.) 

Per  Curiam.]     '-i^ Welsbach  Light  Co.    v.    Incandescent   Light 
Co.  etal,  93  Fed.  Rep.  989. 

5.  Carter-Crume  Co.  v.  Ashley  et  al,  68  Fed.  Rep.  378. 
Appealed  from  the  Circuit  Court  of  the  United  States  for  the 
Northern  District  of  New  York.  Appeal  dismissed  on  motion 
of  appellee.      (C.  C.  A.,  2d  Cir.      Nov.  10,  1897.) 

Per  Curiam.]     *  Carter-Crume  Co.  v.   Ashley  et  al,   96  Fed. 
Rep.  1004. 

6.  Tannage  Patent  Co.  v.  Donallan,  93  Fed.  Rep.  811. 
Sand.  Pat.  Dig.  1899.  Appealed  from  the  Circuit  Court  of  the 
United  States  for  the  District  of  Massachusetts.  Appeal  dis- 
missed per  stipulation.     (C.  C.  A.,  1st  Cir.     Nov.  2,  1899.) 

Per  Curiam.]     *  Donallan  v.  Tannage  Patent  Co.,  96  Fed.  Rep. 
1004. 

7.  New  York  Filter  Mfg.  Co.  v.  Elmira  Water  W'ks  Co.,  83 
Fed.  Rep.  1013.  Appealed  from  the  Circuit  Court  of  the 
United  States  for  the  Northern  District  of  New  York.     Appeal 


DECISIONS    OF    FOREIGN    COURTS.  93 

dismissed  on  consent  inirsuant  to  the  20th  rule.      (C.  C.  A.,  2d 
Cir.     Mar.  IG,  1898.) 

Per  Curiam.]  ^Ehninv  Water  Wks  Co.  v.  New  York  Filter 
Mfg.  Co.,  9G  Fed.  Rep.  1005. 
8.  Brown  d  at.  r.  Reed  ^ifg.  Co.,  81  Fed.  Rep.  48.  Ap- 
pealed from  the  Circuit  Court  of  the  United  States  for  the 
Northern  District  of  New  York.  Appeal  dismissed  on  consent 
pursuant  to  20th  rule.      (C.  C.  A.,  2d  Cir.     Mar.  10,  1898.) 

Per  Curiam.]     *Reed  INIfg.  Co.  v.  Brown  et  aL,  9G  Fed.  Rep. 
1005. 

IV.   Disposition  of  Petition  for  Rehearing. 

1.  Antisdel  v.  Chicago  Hotel  Cabinet  Co.,  89  Fed.  Rep.  308. 
Sand.  Pat.  Dig.  1898,  24,  37,  104,  109.  Petition  for  rehearing 
denied.     (C.  C.  A.,  7th  Cir.     Dec.  1,  1898.) 

*  Antisdel  v.  Chicago  Hotel  Cabinet  Co.,  90  Fed.  Rep.  828. 

2.  Atwater  et  al.  v.  Castner  el  oL,  88  Fed.  Rep.  G42.  Petition 
that  mandate  be  recalled  and  a  rehearing  be  ordered  dismissed. 

*  Atwater  et  al.  v.  Castner  et  al. ,  90  Fed.  Rep.  828. 

3.  Willcox  &  Gibbs  Sewing-Mach.  Co.  v.  Merrow  Mach.  Co., 
98  Fed.  Rep.  206;  85  0.  G.  1078.  Sand.  Pat.  Dig.  1898,  43, 
108,  131.  Api)lication  for  rehearing  was  allowed  upon  the 
single  "question  of  similarity  of  equivalency  of  defendants' 
hoop  looper  to  complainants'  double-jawed  looper. "  No  cause 
for  modifying  the  original  opinion  appears.  (C.  C.  A.,  2d 
Cir.     Mar.  1,  1899.) 

Lacombe,  J.]     *AVillcox  &  Gibbs  Sewing-Mach.  Co.  v.  ^lerrow 
Mach.  Co.  elal,  93  Fed.  Rep.  215. 

4.  Hart  &  Hegeman  Mfg.  Co.  v.  Anchor  Electric  Co.  et  al., 
92  Fed.  Rep.  G57.  Sand.  Pat.  Dig.  1899.  Petition  for  rehear- 
ing denied.     (C.  C.  A.,  1st  Cir.     Aug.  1,  1899.) 

Per  Curiam.]     *Hart  &  Hegeman  Mfg.  Co.  v.  Anchor  Electric 
Co.  etal,  97  Fed.  Rep.  224. 

Decisions  of  Foreign  Courts. 

The  decisions  of  courts  of  a  foreign  country  that  a  certain  pro- 
cess is  patentable,  are  in  no  way  controlling  upon  the  courts  of 
this  country,  but  they  are  valuable  as  the  opinions  of  trained 


94  DEFENSES. 

experts  in  the  country  of  the  inventor  where  the  })articuhir  art 
in  question  is  l)est  understood.  The  oi)inions  of  such  men, 
learned,  able  and  disinterested,  officially  ex})ressed  after  thor- 
ough examination,  are  persuasive  to  Sciy  the  least.  (C.  C, 
S.  D.  N.  Y.     May  8,  18'J9.) 

CoxE,  J.]     *Badische  Analin  &  Soda  Fabrik  v.  Kalle  et  al,  94 
Fed.  Rep.  1G3. 

Defenses. 

I.  Is  General. 
If.  Burden  of  Proof. 

I.  In  General. 

1.  The  interveners  may  make  any  defense  which  the  original 
defendants  could  make,  but  they  cannot  strengthen  that  defense 
by  showing  that  if  they  had  tliemselves  been  sued,  their  posi- 
tion would  have  been  stronger,  nor  set  up  a  defense  not  open  to 
the  original  defendants.  (C.  C,  E.' D.  Penn.  Fed.  23,  1899.) 
Dallas,  J.]     *  Powell  et  al.  v.  Leicester  Mills  et  al,  92  Fed. 

Rep.  115. 

2.  Aliandonment,  not  a{)pearing  on  the  face  of  the  bill,  is  a 
dfifense  which  must  be  interposed  by  answer  showing  the  facts. 
(Walk.  Pat.  §  G02.)      (C.  C.,  D.  Conn.     Feb.  22,  1899.) 
Townsend,  J.]     *  Warren  Featherbone  Co.  v.  ^^'arner  Bros.  Co., 

92  Fed.  Rep.  990. 

II.  Burden  of  Proof. 

1.  The  burden  of  proof  to  show  that  the  patent  in  suit  has 
been  anticii)ated  l)y  prior  patents  is  u})on  the  party  who  alleges 
such  anticipation,  and  he  must  establish  the  fact  of  anticipation 
and  want  of  originality  by  clear  and  convincing  evidence  and 
place  the  matter  beyond  a  reasonal)le  doul)t;  particularly  so 
where  the  ])atent  in  suit  has  been  held  valid  in  another  suit. 
(C.  C,  N.  D.  Cal.     Dec.  12,  1898.) 

Morrow,  J.]     *  Bowers  r'.  San  Francisco  Bridge  Co.,  91   Fed. 
Rep.  381. 

2.  Anticipation  to  defeat  a  patent  must  be  proved   beyond  a 
reasonable  doubt.      (C.  C,  S.  D.  N.  Y.      Dec.  16,  1898.) 
Wheeler,  ,J.]     *  Nelson  et  al.  v.   Farmer  Type-Founding  Co. 

etal,  91  Fed.  Rep.  418. 


DESIGNS.  95 

8.   The  ])uidcn  of  proving  anticipation  rests  upon  the  defend- 
ants, and  every  reasonable  doubt  should   be  resolved  against 
them.      (C.  C./S.  D.  N.  Y.      May  8,  1899.) 
CoxE,  J.]      ^i'Badische  Analin  S:  Soda  Fabrik  r.  Kalle  ct  al.,  94 
Fed.  Rep.  163.) 

4.   The  existence  of  doubt  defeats  anticipation.  */cZ. 

Designs. 

I.  Appeal  and  Petition. 

II.  Construction  of  Statutes. 

III.  Infringement. 

IV.  Limited  to  a  Single  Invention. 
V.  Interference. 

VI.   Practice  in  the  Patent  Office. 
A^'II.  Test  of  Identity. 

I.   Appeal  and  Petition. 

1.  Where  a  petition  was  takeri  to  the  Commissioner  praying 
that  the  examiner  be  advised  that  applicant's  article  can  be 
protected  under  the  design  statute  and  that  the  said  application 
should  be  allowed  unless  the  design  l)e  found  to  be  fully  antici- 
pated, Held,  that  this  is  a  question  which  goes  to  the  merits  of 
the  case  and  is  appealaljle  to  the  examiners-in-chief.  (Oct.  25, 
1899. ) 

DuELL,  C]      Ex  parte  Groyes,  89  0.  G.  1671. 

2.  Where  the  Commissioner  Avas  asked  by  petition  to  advise 
the  examiner  what  is  or  is  not  a  competent  reference,  Held  that 
this  is  a  c]uestion  not  to  be  settled  by  petition.  The  examiner 
in  the  first  instance  is  the  judge  of  the  pertinency  of  the  refer- 
ence or  ground  of  rejection.  The  Commissioner  may  diffei' 
wiih  him,  and  when  the  case  comes  to  him  on  ajipeal  he  may 
properly  make  that  difference  of  opinion  known;  but  he  is  not 
authorized  in  an  irregular  way  to  coerce  the  independent  judg- 
ment of  the  examiner.  Id. 

3.  Where  it  was  prayed  that  the  examiner  be  instructed  that 
originality  and  utility  are  proper  grounds  to  justify  the  grant  of 
design  patent  to  the  applicant.  Held  that  this  is  a  ([uc^^tion  of 
merits  Avhich  is  appealable  to  the  examiners-in-chief  in  the  first 
instance.  Id. 


96  DESIGNS. 

4.  Where  an  applicant  claimed  a  design  for  inner  and  outer 
tubes  forming  (he  fire-walls  between  the  inner  and  outer  Hame 
of  a  hydrocarbon-burner,  and  tbe  examiner  required  him  to 
amend  his  case  to  set  up  a  single  definite  article  of  manufacture 
and  not  two  articles,  on  petition  to  the  Commissionei',  Held  that 
the  question  presented  is  one  involving  the  merits  of  the  claim 
rather  than  its  form,  and  that  therefore  it  is  not  reviewable  on 
petition.  {Ex,  parte  Brower,  4  0.  G.  450;  ex  parte  Smith,  81 
0.  G.  9(59;  ex  parte  Tallman,  82  0.  G.  337;  ex  parte  Brand,  83 
0.  G.  747,  and  ex  parte  Kapp,  83  0.  G.  1993,  modified.) 
(Nov.  3,  1899.) 

Greeley,  A.  C]     Ex  parte '^Xievman  and  Harms,  89  0.  G.  2067. 

5.  Where  an  applicant  asks  for  a  design  patent  covering  a 
certain  form  of  device,  the  Office  cannot  i)roperly  refuse  to  act 
upon  the  merits  of  the  case  and  require  him  to  sul)stitute  there- 
for a  claim  to  some  other  article,  as  to  do  so  would  deprive  him 
of  the  statutory  right  of  appeal  to  the  examiners-in-chief,  to  the 
Commissioner,  and  to  the  Court  of  Appeals.  Id. 

6.  The  holding  that  two  or  more  elements  covered  by  a  single 
claim  should  be  divided  is  in  effect  a  holding  that  such  claim 
cannot  be  allowed,  and  is  such  a  refusal  of  the  claim  as  entitles 
api^licant  to  a  review  of  that  action  l>y  the  several  tribunals 
mentioned  in  the  statutes,  since  it  is  based  upon  the  subject- 
matter  covered  and  not  the  mere  form  of  the  claim.  Id. 

II.  Construction  of  Statutes. 

1.  The  broad  proposition  that  R.  S.  §  4929  was  not  intended 
to  apply  to  structures  having  movable  parts,  is  not  supported 
by  the  citation  of  any  judicial  decision;  and  although  certain 
rulings  of  the  Patent  Office  are  cited  to  support  the  proposition, 
{Ex  parte  Tallman,  82  0.  G.  337;  ex  parte  Adams,  84  0.  G.  311; 
ex  parte  Smith,  81  0.  G.  969;  ex  parte  Brower,  C.  D.  1873,  151), 
such  a  construction  of  the  statute  calls  for  an  unwarranted  and 
unreasonable  limitation  of  the  terms  "manufacture  "  and  "  any 
article  of  manufacture,"  and  leads  to  absurd  and  unjust  results, 
(C.  C,  D.  Mass.     Dec.  5,  1898.) 

Brown,  J.]     *  Chandler  Adjustable  Chair  &  Desk  Co.  v.  Hay- 
wood Bros.  &  Wakefield  Co.,  91  Fed.  Rep.  163. 

2.  The  whole  purpose  of  Congress  in  authorizing  the  grant  of 


DESIGNS.  97 

design  }>atents  was  to  tiivo  encoiiram'njcnt  to  the  clccorative 
arts.  It  contemplated  not  so  inurh  utility  as  ap})earanee. 
Section  4929  provides  among  other  things  that  ''Any  person 
■who  *  *  *  has  invented  and  produced  *  *  -•■  *  any  new,  vi^e- 
ful  and  original  shape  or  configuration  of  any  article  of  manu- 
facture *  *  *  *  may  *  *  *  ohtain  a  patent  tlierefor."  The 
word  "useful,"  introduced  by  revision  of  the  patent  laws  into 
the  statute  does  not  have  the  same  meaning  as  it  has  in  the  sec- 
tion providing  for  patents  for  useful  inventions,  hut  was  prob- 
ably inserted  out  of  abundant  caution  to  indicate  that  things 
which  were  vicious  and  had  a  tendency  to  corrupt,  and  in  this 
sense  were  not  useful,  were  not  to  be  covered  b}'  the  statutes. 
(C.  C.  A.,  6th  Cir.     Oct.  3,  1899.) 

Taft,  J.]     * Westinghouse  Electric  &  Mfg.    Co.   v.   Triumph 
Electric  Co. ,  97  Fed.  Rep.  99. 

III.  Infringement. 

1.  AMiere  a  design  patent  differs  from  prior  design  patents 
only  in  the  shape  or  contour  of  a  certain  specified  feature, 
Heldj  that  it  is  not  infringed  l)y  a  design  in  Avhich  the  shape  or 
contour  of  that  feature  is  different.  (C.  C,  S.  D.  N.  Y.  Nov. 
19,  1898.) 

Wheeler,  J.]     *Mesinger  Bicycle  Saddle  Co.  v.  Humber  c^  al, 
94  Fed.  Rep.  672. 

2.  Where  the  similarity  of  appearance  between  an  alleged 
infringing  design  and  the  design  of  the  patent  grows  out  of  the 
general  similarity  in  designs  of  such  articles,  rather  than  out  of 
the  particular  similarity  of  the  alleged  infringing  design  to  the 
design  of  the  patent,  and  the  patent  was  not  of  a  primary 
nature.  Held,  there  was  no  infringement.  (C.  C,  S.  D.  N.  Y. 
May  11,  1899.) 

Wheeler,  J.]     *Mesinger  Bicycle  Saddle  Co.  v.  llmwljvr  d  (d., 
94  Fed.  Rep.  674. 

IV.  Limited  to  a  Single  Invention. 

1.  Designs  have  relation  to  external  appearance  merely  and 
are  not  concerned  with  internal  structure.      (Oct.  26,  1899.) 
Greeley,  A.  C]     Feder  v.  Poyet,  89  0.  G.  1343. 

2.  In  design  patents  it.  is  the  showing  of  the  design  which  is 

7 


98  DESIGNS. 

of  prinuuT  importance,  tlie  description  l)eing  merely  auxiliary 
to  the  showing.  The  language  of  the  description  cannot  be 
used  to  give  to  the  design  a  generic  meaning  which  would 
include  designs  so  far  different  from  the  design  shown  that  they 
would  not  be  mistaken  for  it.  (Ex  parte  Traitel,  25  0.  G.  783; 
C.  D.,  1883,  92.)  Id. 

3.  There  is  no  such  distinction  of  generic  and  specific  in 
design  patents  as  there  is  in  mechanical  patents.  If  an  inventor 
has  a  generic  design  capable  of  modification — that  is,  a  design 
made  up  of  a  small  number  of  simple  elements  to  which  other 
elements  may  be  added  without  modification  of  the  essential 
elements — he  should  in  order  to  secure  protection  for  the  generic 
design  show  the  design  in  his  application  in  its  simplest  form. 
He  must  show  the  genus  stripped  of  additions.  Id. 

V.  Interference. 

1.  The  issue  in  the  present  case  being  the  conventional  claim 
for  the  design  showai  and  described,  its  meaning  is  to  be  ascer- 
tained from  the  drawing  and  description  to  which  it  refers. 
(Oct.  26,  1899.) 

Greeley,  A.  C]     Feder  v.  Poyet,  89  0.  G.  1343. 

2.  If  there  is  doubt  as  to  the  meaning  of  the  issue  and  one 
])arty  has  a  patent  granted  before  the  filing  of  the  other  party's 
application,  its  meaning  is  to  be  ascertained  from  the  patent  as 
well  in  design  as  in  mechanical  cases.  Id. 

3.  Held,  that  the  designs  produced  by  F.  prior  to  P. 's  filing 
date  do  not  embody  the  invention  in  issue,  and  therefore  priority 
awarded  to  P.  Id. 

VI.  Practice  in  the  Patent  Office. 

1.  Where  a  claim  was  for  "a  design  for  ornament  for  the 
handle  of  a  tooth-brush,"  etc.,  and  the  examiner  required  that 
the  invention  should  be  claimed  as  "  a  design  for  the  handle  of 
a  tooth-brush,"  etc.,  Held,  that  the  examiner's  requirement 
should  be  sustained,  as  such  an  ornament  is  an  intangible  thing 
which  should  not  under  the  circumstances  and  decisions  be 
patented  as  a  design,  but  the  design  patent  should  be  granted 
for  the  instrument  which  applicant  has  invented  and  produced. 
(Mar.  31,  1899.) 
DuELL,  C]     Ex  parte  Hewitson,  87  0.  G.  515. 


DISCLAIMEK.  99 

2.  Held^  furtlior,  tliat  altlum^li  applicant's  design  is  produced 
by  ornamentation  instead  of  by  sbape  there  is  no  more  reason 
why  it  should  be  claimed  as  a  design  for  an  ornament  than  that 
a  design  consisting  of  the  shape  of  an  article  or  a  design  for  a 
pattern  for  carpet  should  be  claimed  as  a  design  for  the  shape  or 
pattern  instead  of  as  a  design  for  the  article  shaped  or  a  design 
for  the  carpet.  Id. 

3.  To  require  division  between  the  elements  covered  by  a 
claim  of  the  kind  under  consideration  is  analogous  to  requiring 
division  between  the  elements  covered  by  an  alleged  combina- 
tion claim  in  a  mechanical  application.  It  has  been  repeatedly 
held  in  such  cases  that,  although  the  claim  covers  a  mere  aggre- 
gation and  not  a  true  combination,  division  between  the  ele- 
ments covered  by  it  should  not  be  insisted  upon,  but  the  claim 
should  be  rejected.     (Nov.  3,  ]899.) 

Greeley,  A.  C]     Ex  parte  Sherman  and  Harms,  89  0.  G.  2067. 

VII.  Test  of  Identity. 

The  true  test  of  identity  of  design  is  sameness  of  appearance, 
in  other  words,  sameness  of  effect  upon  the  eye  of  the  ordinary 
observer,  and  if  two  designs  are  so  much  alike  that  one  may  be 
readily  taken  for  the  other  b}^  an  ordinary  observer,  the  earlier 
is  an  anticipation  of  the  later,  even  though  there  may  be  differ- 
ences in  detail  and  in  non-essential  matters.  (C.  C,  E.  D. 
Penn.     July  10,  1899.) 

McPherson,  J.]     *Sagendorph  v.  Hughes,  95  Fed.  Rep.  478. 

Disclaimer. 

I.  Construction  of. 
II.  Delay  in  Filing. 
III.  Under  the  Statute,  4917  R.  S. 
I.  Construction  of. 

1.  In  considering  the  scope  and  effect  to  be  given  a  disclaimer, 
the  same  rules  are  to  be  observed  as  in  construing  any  other 
written  instrument,  and  so  as  to  carry  out  the  intention  of  the 
person  executing  it,  as  indicated  by  its  language  when  construed 
with  reference  to  the  proceedings  of  which  it  forms  a  part.  It 
cannot  be  read   independently  of   its  relation  to  the  original 


100  DISCLAIMER. 

specification  of  which  it  hecoines^  part  when  recorded.      (C.  C. 
A.,  9th  Cir.     Oct.  24,  1897.) 

DeHaven,  J.]     *  Graham  v.  Ear],  82  Fed.  Rep.  737;  92  Fed. 
Rep.  155. 

2.  B}^  disclaiming  the  broad  claims  of  his  patent  and  retain- 
ing the  narrower  ones,  the  patentee  intended  to  limit  his  patent 
to  the  specific  invention  descril)ed  in  such  narrower  claims,  and 
not  to  abandon  them.  */(i. 

3.  Where  it  was  manifest  that  an  invention  might  be  applied 
to  any  one  of  four  varieties  of  an  article  of  manufacture,  but  if 
applied  to  two  of  those  varieties,  it  would  subserve  no  useful 
purpose  and  the  patent  for  such  invention  might  fairly  be  held 
void  for  lack  of  utility,  and  when  applied  to  the  other  two  of 
those  varieties  it  would  accomplish  a  "desirable  result,"  as 
both  the  Circuit  Court  and  Court  of  Appeals  held,  Held,  that 
there  was  an  actual,  separable  invention,  and  that  the  specifica- 
tion and  claim  was  broader  than  the  invention.  Held,  further, 
that  a  disclaimer  to  the  application  of  the  invention  to  the  two 
varieties  Avas  proper,  and  leaves  the  patent  in  force  as  to  the 
other  two  varieties  of  the  class  of  articles  to  which  it  added  a 
desirable  result.  (C.  C.  A.,  2d  Cir.  May  25,  1899.) 
Lacombe,  J.]      *  Thompson   et  al.  v.   N.    T.    Bushnell  Co.,  96 

Fed.  Rep.  238. 

II.  Delay  in  Filing. 

Where  the  Circuit  Court,  from  the  evidence  before  it,  did  not 
consider  a  disclaimer  to  certain  features  of  a  patent  in  suit 
necessary,  and  it  was  onl}^  Avhen  the  decision  of  the  Circuit 
Court  of  Appeals  was  filed  that  the  owners  of  the  patent  were 
apprised  of  the  necessity  of  such  disclaimer,  which  was  duly 
filed  within  six  weeks  thereafter.  Held,  that  said  patent  owners 
acted  with  reasonable  promptness  in  filing  such  disclaimer. 
(C.  C.  A.,  2d  Cir.     May  25,  1899.) 

Lacombe,  J.]     -'=  Thompson  et  al.   v.   N.   T.    Bushnell  Co.,   96 
Fed.  Rep.  238. 

III.  Under  the  Statute.     §  4917  R.  S. 

1.  A  disclaimer  to  be  effective  under  the  statute  must  give  up 
some  material  or  substantial  part  of  the  thing  patented  of  which 


EQIITV.  101 

the  patentee  was  not  the  orijiinal   inventor.     Tlie  statute  ex- 
pressly limits  a  disclaimer  to  a  rejection  of  something  elainied 
as  new.     (C.  C.  A.,  3d  Cir.     Aug.  21,  1899.) 
KiRKPATRicK,  J.]     *  Cambria  Iron  Co.   v.   Carnegie  Steel  Co. 
Lim.,  m  Fed.  Rep.  850. 
2.   No  disclaimer  in  a  patent  is  necessary  to  the  recovery  of 
da.mages  or  costs  in  a  suit  for  the  infringement  of  the  patent 
unless  the  patentee  has  included  in  the  claims  sued  upon  some- 
thing to  which  he  was  not  entitled.      (C.  C.  A.,  3d  Cir.      Oct. 
4,  1899.) 
Bradford,  J.]     *McNeely  et  al.  v.  Williames  et  al. 

Wilhames  et  al.   v.  McNeely  et  al,  96  Fed. 
Rep.  978. 
Equity. 

I.   Bill. 

(a)  In  General. 
(6)   Multifariousness. 
II.  Demurrer. 

III.  Plea. 

IV.  Answer. 

V.  Jurisdiction. 
VI.  Master's  Report. 
VII.   Res  adjudicata, 
I.   Bill. 

(a)  In  General. 

Where  the  complaint  sets  forth  the  invention  of  the  patent 
upon  which  suit  is  brought  by  the  name  given  it  in  the  patent, 
and  makes  special  reference  to  the  patent  "for  further  and 
fuller  description  of  the  invention  therein  patented,"  such  refer- 
ence imports  into  the  complaint  the  description  contained,  and 
is  controlling  as  to  the  nature  of  the  invention  patented.  (C.  C. 
A.,  9th  Cir.  Oct.  18,  1897.) 
DeHayen,  J.]     *  Graham  v.  Earl,  82  Fed.  Rep.  737;  92  Fed. 

Rep.  155. 
I.   Bill. 

(b)  Multifariousness. 

1.   Unlawful  competition  before  the  grant  of  a  patent  is  en- 


102  EQUITY. 

tirely  distinct  from  aii}^  infringement  after;  the  acts  are  separate 
and  their  consequences  distinct.  The  setting  up  of  both  acts  as 
grounds  for  relief  makes  two  cases  for  distinct  relief  in  the  same 
bill.  The  demurrer  for  multifariotisness  was  sustained.  (C.  C, 
S.  D.  N.  Y.     Dec.  5,  1898.) 

Wheeler,  J.]     *  Ball  &  Socket  Fastener  Co.  v.  Cohn  et  ciL,  90 
Fed.  Rep.  664. 

2.  The  objection  of  multifariousness  is  one  which  addresses 
itself  to  the  sound  discretion  of  the  court,  and  should  not  be 
sustained  where  the  relief  prayed  for  is  of  the  same  kind  with 
respect  to  the  matters  complained  of  in  the  bill,  and  no  hard- 
ship or  injustice  is  likely  to  result  from  the  inclusion  of  such 
matters  in  one  suit.  (C.  C,  D.  Del.  May  ij,  1899.) 
Bradford,  J.]     *Dennison  Mfg.   Co.  v.  Thomas  Mfg.  Co.,  94 

Fed.  Rep.  651. 

3.  A  bill  Avhieh  sets  up  a  claim  for  damages  under  the  anti- 
trust law  of  July  2,  1892,  and  also  sets  forth  facts  upon  which 
the  complainants  ask  that  defendants  be  enjoined  from  using 
complainants'  trade-mark  and  trade-name  is  multifarious,  inas- 
much as  it  joins  two  distinct  causes  of  action,  having  no  con- 
nection with  each  other,  the  one  triable  at  law  and  the  other  is 
of  equitable  cognizance.  (C.  C,  S.  D.  Ohio,  W.  D.  July  31, 
1899. ) 

Thompson,  J.]     *  Block   et  al.    v.    Standard   Distilling  &   Dis- 
tributing Co.,  95  Fed.  Rep.  978. 

4.  Where  the  l)ill  of  com})laint  is  based  upon  the  infringe- 
ment of  several  patents  each  covering  a  device  which  is  sold 
separately,  and  all  used  in  various  relations,  no  one  machine 
using  them  all  at  one  time,  and  such  bill  does  not  seek  to 
restrain  the  infringement  of  any  specific  combination,  it  is  bad 
for  multifariousness.  (C.  C,  N.  D.  111.  N.  D.  July  19,  1899.) 
KoHLSAAT,  J.]     *  Louden  Mach.   Co.  v.  Montgomery  Ward  & 

Co.,  96  Fed.  Rep.  232. 

5.  Such  a  case  does  not  come  within  the  rule  which  permits 
a  plurality  of  patents  to  be  sued  upon  in  one  action  where  the 
invention  covered  by  those  patents  are  embodied  in  one  infring- 
ing process,  machine,  process,  or  composition  of  matter.    ^Id. 


EQUITY.  103 

II.  Demurrer. 

The  failure  of  a  bill  to  allege  that  the  inventions  set  forth  and 
claimed  in  the  patents  in  suit  were  not  abandoned  before  the 
application  therefor,  is  no  ground  for  demurrer.  Abandon- 
ment, not  appearing  in  the  face  of  a  bill,  is  a  defense  which 
must  be  interposed  by  answer  showing  the  facts.  (C.  C,  D. 
Conn.     Feb.  22,  1899.') 

TowNSEXD,  J.]     *  Warren  Featherbone  Co.    r.   Warner  Bros., 
92,  Fed.  Rep.  990. 

III.  Plea. 

Where  the  hearing  was  upon  the  plea,  a  general  replication 
and  the  evidence  taken  in  support  of  the  plea,  such  plea  being 
a  special  answer  to  the  bill,  nothing  is  put  in  issue  so  far  as  the 
plea  extends,  but  the  truth  of  the  matter  pleaded.  And  where 
the  original  plea  was  set  down  for  argument  as  insuflicient  in 
laAv,  and  the  court  permitted  it  to  be  amended,  and  no  error 
having  been  assigned  upon  the  ruling  of  the  court  in  sustaining 
the  plea  as  sufficient  in  law,  the  onlv  question  open  to  review 
on  appeal  is  as  to  whether  the  court  erred  in  holding  that  the 
plea  was  sustained  by  the  evidence.  If  it  was  not  supported  it 
should  have  been  overruled  and  the  defendant  ordered  to  answer, 
and  if  supported,  the  1)111  should  have  been  dismissed.  (C.  C. 
A.,  6th  Cir.  June  6,  1899.) 
LuRTOX,  J.]     "^^  Hartzf.  Cleveland  Block  Co.,  95  Fed.  Rep.  681. 

IV.  Answer. 

Where  an  amendment  to  the  answer  pleads  the  effect  of  cer- 
tain written  instruments  in  the  nature  of  an  assignment,  which 
were  filed  in  the  case  subsequent  to  the  original  answer  but 
long  before  the  case  was  submitted,  and  such  amendment  does 
not  affect  the  facts  of  the  case,  but  may  be  said  to  be  an  amend- 
ment to  conform  to  the  proof,  there  is  no  reason  why  it  should 
not  be  allowed  to  be  filed.  (C.  C,  D.  Ivy.  June  3,  1899.) 
Evans,  J.]     *  Patent  Button  Co.  v.  Pilcher,  95  Fed.  Rep.  479. 

V.  Jurisdiction. 

1.  The  authorities  are  fairly  uniform  that  where  a  pattMit  will 
expire  a  few  days  sul)se(iuent  to  the  commencement  of  a  suit, 
and  the  return  day  of  the  subpoena  follows  by  a  few  days  the 


104  EQUITY. 

expiration  of  the  patent,  equity  will  not  take  jurisdiction  even 
though  the  bill  of  complaint  contain  a  prayer  for  injunction 
both  preliminary  and  permanent,  and  the  usual  prayer  for  dis- 
covery and  accounting.  Where  no  special  circumstances  are 
shown  over  the  ordinary  cases  of  account,  which  would  make 
the  accounting  so  intricate  as  to  make  a  suit  at  law  an  inade- 
quate and  incomplete  remedy,  and  nothing  appears  from  the 
bill  to  show  that  adequate  discovery  cannot  be  had  at  law, 
equity  will  not  interfere.  (C.  C,  N.  D.  111.  N.  D.  July  19, 
1899."^) 

KoHLSAAT,  J.]  ^^  Overweight  Counterbalance  Elevator  Co.  v. 
Standard  Elevator  Co.  Same  v.  Eaton  & 
Prince  Co.  et  al.  Same  v.  Crane  Elevator 
Co.  Same  v.  J.  W.  Reedy  Elevator  Mfg. 
Co.,  96  Fed.  Rep.,  231. 

2.  A  mere  allegation  that  complainant  has  no  adequate 
remedy  at  law,  unaccompanied  by  allegations  of  facts  supporting 
the  same  will  not  confer  jurisdiction  upon  equity.  */cZ. 

3.  A  court  of  equity  will  not  take  cognizance  of  a  case  simply 
for  the  purpose  of  construing  the  meaning  or  scope  of  a  patent. 
Where  the  ultimate  object  sought  is  the  payment  of  royalties 
the  suit  is  essentially  one  on  a  contract,  and  a  suit  on  a  contract 
of  license  under  letters  patent  is  not  a  suit  arising  under  the 
patent  laws.  (C.  C,  N.  D.  111.  N.  D.  July  27,  1899.) 
KoHLSAAT,  J.]     ^^ Perry  v.  Noyes  et  al,  96  Fed.  Rep.  233; 

VI.   Master's  Report. 

1.  The  procedure  enjoined  by  the  83d  rule  of  equity  with 
resjDect  to  the  tiling  of  the  master's  report  does  not  deprive  the 
court  of  the  power  and  jurisdiction  to  permit  the  master  to 
withdraw  the  report  for  amendment,  nor,  by  virtue  of  the  rule, 
do  the  parties  to  the  suit  acquire  a  vested  right  in  the  report 
akin  to  the  right  of  property,  of  which  they  cannot  be  divested 
except  by  due  process  of  law.  (C.  C,  S.  D.  Ohio  W.  1). 
Feb.  4,  1899.) 

Taft,  J.]     *Nat'l  Folding-Box  &  Paper  Co.  v.  Dayton  Paper- 
Novelty  Co.,  91  Fed.  Rep.  822. 

2.  The  order  of  the  court  giving  the  master  leave  to  withdraw 
his  report  for  amendment,  necessarily  gave  him  authority  to 


ECJUIVALENTS. 


105 


make  an  amended  report,  and  he  was  as  mueli  mastiT  of  the 
court  when  he  made  the  seeond  report  as  when  he  math'  the 
first.  --'I'l 

3.  After  the  master  has  made  and  filed  his  report,  lie  should 
not  upon  re-reference  for  amendment,  reverse  his  rulings  on  the 
evidence  and  law  without  giving  the  parties  notice.  "^Id. 

VII.   Res  Adjudicata. 

An  order  dismissing  a  bill  for  want  of  i)rosecution  is  not  a 
bar  to  another  bill.      (C.  C,  D.  Mass.     Jan.  24,  1899.) 
Brown,  J.]     ='^  A\'hitaker  v.  Davis  et  al,  91  Fed.  Rep.  720. 

Where  a  plea  merely  avers  that  the  parties  are  the 'same  or 
in  privit}^  that  the  letters  patent  relied  on  are  the  same  and 
that  the  acts  of  infringement  are  the  same  as  those  on  a  former 
suit,  wherein  the  bill  for  relief  for  infringement  w^as  dismissed 
for  want  of  prosecution,  Held,  that  it  does  not  show  that  the 
matter  is  res  judicata.  ^Id. 

Eqiiivalents. 

1.  While  it  is  an  abuse  of  the  term  "equivalent"  to  employ 
it  to  cover  every  combination  of  devices  in  a  machine  Avhich  is 
used  to  accomplish  the  same  result,  yet  where  a  device  was  a 
well  known  and  proper  substitute  for  the  one  described  in  com- 
plainant's specification  at  the  date  of  his  patent,  it  is  a  mechan- 
ical equivalent  therefor,  according  to  repeated  expressions  of 
the  Supreme  Court  left  unqualified  by  the  decision  in  Westing- 
house  v.  Power  Brake  Co.,  170  U.  S.  537,  18  Sup.  Ct.  707,  83 
O.  G.  1067,  and  recognized  in  that  case  by  its  citation  of 
Imheuser  v.  Buerk,  101  U.  S.  647,  656.  (C.  C.  A.,  1st  Cir. 
Feb.  13,  1899.) 

Colt,  J.]      *  Beach?'.  Hobbs  et  al.     Hobbs  et  al.  v.  Beach,  92 
Fed.  Rep.  146,  87  0.  G.  1961. 

2.  Neither  the  words  "substantially  as  described"  in  the 
claims  nor  the  proceedings  in  the  Patent  Office  in  which  the 
patentee  accpiiesced  in  the  decision  that  these  words  must  be 
inserted  after  the  word  "mechanism"  in  the  claims,  jjrohibit 
the  patentee  from  invoking  the  doctrine  of  equivalents  with  re- 
spect to  alleged  infringers.  Nor  in  dealing  with  a  broad  inven- 
tion which  represents  a  distinct  advance  in  the  art,  does  it  estop 


106  EQUIVALENTS. 

a  meritorious  inventor  from  asking  the  court  to  apply  a  more 
liberal  rule  as  to  what  constitutes  equivalents,  than  is  applicable 
to  a  narrow  invention  which  is  only  an  improvement  on  what 
was  old  and  well  known.  */fZ. 

3.  Where,  at  the  date  of  the  patent,  pivoted  and  fixed  switch 
rails  or  tracks  were  old  and  familiar  devices  for  transferring  cars 
from  one  track  to  another,  well  known  equivalents,  and  the 
substitution  of  one  for  the  other  in  the  combination  of  the 
patent  works  no  new  or  different  result  whatever.  (C.  C.  A., 
3dCir.     May  1,  1899.) 

AcHESON,  J.]     *  Thompson  v.  Third  Avenue  Traction  Co.  et  ciL, 
93  Fed.  Rep.  824. 

4.  The  range  of  equivalents  depends  upon  the  nature  and 
extent  of  the  invention.  The  meritoriousness  of  an  improve- 
ment depends,  first,  upon  the  extent  to  which  the  former  art 
has  taught  or  suggested  the  step  taken;  and  second,  upon  the 
advance  made  in  the  usefulness  of  the  machine  as  improved. 
To  be  entitled  to  the  benefit  of  the  doctrine  of  equivalents,  it  is 
not  essential  that  the  patent  be  for  a  pioneer  invention  in  the 
broadest  sense  of  the  term.  If  the  invention  has  marked  a 
decided  step  in  the  art  and  has  proven  of  value  to  the  public, 
the  inventor  or  patentee  will  be  entitled  to  the  benefit  of  the 
rule  of  equivalents,  though  not  in  so  liberal  a  degree  as  if  the 
invention  was  of  a  primary  character.  (C.  C.  A.,  6th  Cir. 
May  2,  1899.) 

LuRTON,  J.]     ^^  Bundy  ]\Ifg.  Co.  v.  Detroit  Time-Register  Co., 
94  Fed.  Rep.  524. 

5.  A  patent  covers  only  known  equivalents,  and  where  at  the 
time  of  the  issue  of  a  patent  a  different  device  was  not  known  to 
be  a  mechanical  e(]uivalent  of  the  device  of  the  patent,  and  in 
fact  such  equivalency  had  been  expressly  denied  by  the  patentee 
in  his  correspondence  with  the  Patent  Office,  the  fact  that  such 
different  device  was  afterward  shown  to  accomplish  the  same 
result  as  that  of  the  patent  does  not  make  its  use  for  such  pur- 
pose an  infringement  of  the  patent.  (C.  C.  A.,  7th  Cir.  Oct. 
3,  1899.) 

Woods,  J.]     '-^ Magic  Light  Co.  v.  Economy  Gas-Lamp  Co.,  97 
Fed.  Rep.  87. 


ESTOPPEL.  107 

6.  Where  a  claim  is  drawn  to  include  an  t'litire  f^mup  of 
chemical  agents  or  elements,  such  as  alkalies,  and  only  certain 
elements  of  the  grouji  are  capable  of  carrying  out  the  specific 
objects  of  the  patent,  such  claim  cannot  be  held  to  include  as 
equivalents  such  other  elements  of  the  group  as  are  incapable  of 
carrying  out  such  objects.  (C.  C,  D.  Conn.  Aug.  28,  1899.) 
TowxsEND,  J.]  *Rickard  et  al.  v.  Du  Bon,  97  Fed.  Rep.  96. 
Estoppel. 

1.  The  defendants  originally  filed  a  plea  of  license  to  the  bill 
in  equity  for  infringement  of  a  patent,  but  by  leave  of  court 
before  hearing  withdrew  the  same  and  filed  an  answer  in  which 
the  license  was  not  pleaded.  Held,  that  defendants  are  not 
estopped  to  deny  the  validity  of  the  patent  by  reason  of  such 
plea,  as  it  is  not  before  the  court.  (C.  C,  S.  D.  Ohio,  W.  D. 
Dec.  2,  1898.) 

Taft,  J.]     *rry  v.  Rookwood  Pottery  Co.  et  al,  90  Fed.  Rep. 
495. 

2.  If  one  not  a  party  of  record  nor  in  privity  with  a  })arty  of 
record  desires  to  avail  himself  of  the  judgment  as  an  estop])el 
on  the  ground  that  he  in  fact  defended  the  action  resulting  in 
the  judgment,  he  must  not  only  have  defended  the  action,  but 
must  have  done  so  openly  to  the  knowledge  of  the  opposite 
party  and  for  the  defense  of  his  own  interests.  That  he  em- 
ployed an  attorney  who  appeared  for  the  defendant  of  record 
and  appeared  as  a  witness  for  such  defendant,  is  not  sufficient 
where  these  facts  are  not  knoAvn  to  the  plaintiff.  (C.  C.  A., 
9th  Cir.     Feb.  13,  1899.) 

Gilbert,  J.]     *  Cramer  r.  Singer  Mfg.  Co.,  93  Fed.   Rep.  636. 

3.  The  fact  that  an  alleged  infringer  at  one  time  held  a 
license,  since  expired,  and  marked  his  machines  as  made  under 
the  patent  sued  on  is  not  an  estoi)iK'l  against  him  on  the  ques- 
tion of  infringement  when  the  record  does  not  shctw  whether  or 
not  his  conduct  in  obtaining  such  license  and  so  marking  his 
machines  w^as  because  he  misconstrued  the  patentee's  rights 
under  his  claims  or  was  merely  not  disposed  to  make  any  con- 
test for  the  time  being.  (C.  C.  A.,  1st  Cir.  June  1,  1899.) 
Putnam,  J.]     *Cushman   Pai)er   Box    Mach.    Co.    r.    Goddard 

et  al,  88  0.  G.  2410,  95  Fed.  Rep.  664. 


108  ESTOPPEL. 

4.  The  doctrine  of  equitable  estoppel  ap])lies  in  the  adminis- 
tration of  the  patent  law,  as  it  does  in  other  cases,  for  the  pre- 
vention of  injustice.     (C.  A.  D.  C.     June  6,  1899.) 

Alvey,  J.]     *  Mower  r.  Duell,  Coni'r  of  Patents,  88  0.  G.  191. 

5.  The  law  does  not  favor  estoppels,  and  the  facts  relied  on  to 
estojj  a  defendant  from  denying  the  validity  of  a  patent  must  be 
clearly  established  and  not  matters  of  inference.  As  a  general 
rule,  fraud  is  an  essential  element  of  an  estoppel  in  pais. 
(C.  C,  N.  D.  111.  N.  D.     July  27,  1899.) 

KoHLSAAT,  J.]      *Burrell  et  al.  v.  Elgin  Creamery  Co.,  96  Fed. 
Rep.  234. 

6.  Each  of  the  parties  had  manufactured  the  articles  covered 
by  a  design  patent  for  about  a  year  and  a  half  prior  to  the 
issue  of  the  patent.  Prior  to  said  issue  complainant  requested 
defendant  to  discontinue  manufacture  of  said  articles  as  a  patent 
had  been  granted  to  him.  Defendant  then  requested  informa- 
tion as  to  when  and  where  the  patent  was  issued.  Complainant 
replied  that  the  patent  "has  been  granted  and  gone  to  issue, 
and  as  soon  as  we  have  a  copy  from  the  Patent  Office  will  for- 
ward same  to  you."  The  patent  was  duly  issued  but  com- 
plainant never  sent  defendant  a  cop}^,  and  defendant  kept  on 
manufacturing  for  a  year  and  a  half  when  complainant  without 
notice  brought  suit.  Held,  that  notwithstanding  the  broken 
promise  of  the  complainant,  he  was  not  estopped  to  claim  full 
damages  upon  an  accounting.  (C.  C,  D.  Conn.  Aug.  14,  1899.) 
TowNSEND,  J.]     *  Jennings  et  al.  v.  Rogers  Silver  Plate  Co.,  96 

Fed.  Rep.  340. 

7.  Where  a  patentee  acquiesced  in  the  action  of  the  Patent 
Office  in  rejecting  two  of  his  three  claims,  leaving  the  third 
claim  •  exactly  as  it  was  originally  drawn,  Held,  that  a  mere 
remark  of  the  examiner  that  "  It  is  not  seen  that  there  is  any 
material  difference  in  the  claims,"  does  not  estop  the  patentee 
from  claiming  the  construction  shown  by  the  specification  and 
such  original  claim,  nor  does  it  limit  him  to  a  construction 
embraced  only  by  the  rejected  claim.  It  is  the  construction  of 
the  patent  as  finally  issued  which  is  to  be  considered.  (C.  C, 
S.  D.  N.  Y.     July  29,  1899. ) 

TowNSEND,  J.]     *Acme  Flexible  Clasp  Co.  v.  Cary  Mfg.  Co., 
96  Fed.  Rep.  344. 


EVIDENCE.  109 

Evidence. 

I.  Admissibility. 
II.  Suppression  on  Motion. 
III.  Weighing. 

I.  Admissibility. 

1.  In  an  action  at  law  to  recover  damages  for  tlie  infringe- 
ment of  a  patent,  evidence  of  what  was  paid  for  royalties  under 
a  distinct  patent  held  by  a  stranger,  especially  when  the  alle- 
gations in  the  declaration  fail  to  shut  out  the  itossihility  that 
that  patent  covered  more  than  the  patent  in  issue  is  incompetent 
and  inadmissible  on  the  question  of  damages,  as  is  also  evidence 
as  to  amounts  rec^eived  in  settlement  of  claims  against  other 
infringers.      (C.  C,  D.  Mass.      Dec.   22,  1898.) 

Putnam,  J.]     *Ewart  Mfg.    Co.   r.   Baldwin   Cycle-Chain   Co. 
etal.,  91  Fed.  Rep.  262. 

2.  The  rule  that  a  compromise  of  litigation  affords  no  satis- 
factory evidence  of  the  value  of  the  property  litigated  is  an 
underlying  one,  and  recognizes  no  distinctions  not  of  a  funda- 
mental character.  */f^. 

3.  Where  a  patent  is  introduced  in  evidence  as  showing  the 
prior  state  of  the  art  and  merely  to  illustrate  its  connection  with 
the  questiori  of  infringement,  and  not  for  the  purpose  of  antici- 
pating the  patent  in  suit,  there  is  no  error  under  R.  S.  §  4920 
in  admitting  it,  even  though  notice  of  such  patent  has  not  been 
given.     (C.  C.  A.,  9th  Cir.     Feb.  13,  1899.) 

Hawley,  J.]  *  Overweight  Counterbalance  Elevator  Co.  v. 
Improved  Order  of  Red  Men's  Hall  Associa- 
tion of  San  Francisco,  94  Fed.  Rep.  155. 

II.  Suppression  of,  on  ^Iotion. 

The  defendant  should  complete  his  evidence  with  respect  to 
the  state  of  the  art  before  the  taking  of  the  complainant's  testi- 
mony in  rebuttal  ;  additional  testimony  and  exhibits,  even 
though  introduced  for  the  sole  purpose  of  narrowing  the  claims 
of  the  patent,  if  introduced  after  the  evidence  of  the  complain- 
ant has  all  been  taken,  will  be  suppressed  on  motion.  (C.  C, 
E.  D.  Penn.  May  26,  1899.) 
Dallas,  J.]     *  Smith  et  al.  v.  Ulrich,  94  Fed.  Rep.  865. 


110 


FOREIGN    PATENTS    AND    PUBLICATIONS. 


III.   Weighing. 

Where  an  elaborate  opinion  of  a  court  of  last  resort  upon  the 
evidence  is  published,  and  the  weaknesses  of  the  losing  side  are 
clearly  brought  out,  and  the  defeated  party  is  thereafter  given 
an  opportunity  to  strengthen  the  defects  of  his  case  by  evidence 
as  to  transactions  long  past,  and  machinery  long  since  cast  into 
the  scrap  heap,  there  is  great  danger  that  the  exigencies  of  the 
case  may  lead  witnesses  to  round  out  evidence  beyond  that 
which  exact  truth  would  permit.  Such  evidence  must  be  taken 
with  great  caution,  and  weighed  in  the  light  of  this  danger. 
(C.  C.  A.,  6th  Cir.     Oct.  23,  1899.) 

Taft,  J.]     *C.   &  A.   Potts   &  Co.  V.   Creager  et  al,  97   Fed. 
Rep.  78. 

Foreign  Patents  and.  Publications. 

The  patents  (if  printed)  and  other  official  patent  publications 
of  the  following  governments  may  be  found  in  the  Scientific 
Library  of  the  U.  S.  Patent  Office: 


Austria- Hungary. 

Barbadoes. 

Belgium. 

British  Honduras. 

Canada. 

Ceylon. 

Denmark. 

Fiji. 

Finland. 

France. 

Germany. 

Great  Britain. 

Hungary. 

Hawaii. 

India. 

Italy. 

Jamaica. 

Japan. 

Leeward  Islands. 

Luxemburg. 


Malta. 

Mauritius. 

Mexico. 

Netherlands. 

New  South  Wales. 

New  Zealand. 

Norway. 

Portugal. 

Queensland. 

Russia. 

South  Australia. 

Spain. 

Straits  Settlements. 

Sweden. 

Switzerland. 

Tasmania. 

Trinidad. 

Victoria. 

West  Australia. 


INFKIXGKMENT.  Ill 

Infringement. 

I.  In  General. 

II.  Claims  for  Combixatiox. 

III.  Contributory. 

IV.  By  Cities  and  Corporations. 
V.  Process. 

VI.  Particular  Cases. 

I.  In  General. 

1.  Infringement  is  a  tort  which  must  be  proved.  It  cannot 
rest  whoh}^  upon  inference  and  conjecture.  (C.  C,  S.  D.  N.  Y. 
Dec.  5,  1898.) 

CoxE,  J.]     *King  et  ah  v.  Anderson  et  al,  90  Fed.  Rep.  500. 

2.  The  defendant's  device  is  in  accord  with  patents  dated 
March  3,  1896  and  March  16,  1897,  under  Avhich  justification 
is  asserted  but  cannot  be  sustained,  as  complainant's  patent 
Avas  granted  upon  an  apphcation  filed  March  5,  1895,  and  ante- 
dated the  application  in  both  of  the  other  patents.  The  fact 
that  complainant's  application  was  forfeited  for  inadvertence 
and  subsequently  reinstated,  cannot  affect  this  priority  of  any 
invention  in  the  device.  (C.  C,  E.  D.  Wis.  July  5,"l898.) 
Seaman,  J.]     *  Western  Electric  Co.  v.  American  Rheostat  Co. 

et  al,  91  Fed.  Rep.  650. 

3.  The  fact  that  the  alleged  infringing  device  was  more  cum- 
bersome and  involved  delays  in  its  use,  is  only  an  ordinary 
feature  of  colorable  infringements  and  does  not  avail  to  escape 
infringement.      (C.  C.  A.,  1st  Cir.     Jan.  30,  1899.) 

Brown,  J.]     *Heap  r.  Greene  et  ah,  91  Fed.  Rep.  792. 

4.  One  who  appropriates  the  exact  device  of  a  valid  claim  of 
a  patent  cannot  escape  infringement  simply  because  he  uses  it 
in  slightly  difTering  environments.  (C.  C,  N.  D.  N.  Y. 
Jan.  3,  1899.) 

CoxE,  J.)     *  Deere  et  al.  r.  Arnold,  92  Fed.  Rep.  186. 

5.  Invasion  of  the  rights  of  a  patentee  may  be  avoided,  how- 
ever nearly  approached,  if  the  subject-matter  of  the  grant  be 
not  substantially  taken;  l)ut  if  the  principle  of  the  invention 
be  appropriated,   liability  for  infringement  cannot  be  evaded 


112  INFRINGEMENT. 

upon  tlie  ground  tliat  the  mechanism  employed  by  the  infringer 
does  not,  in  form  and  structure,  precisely  correspond  with  that 
descril)ed  in  the  patent.      (C.  C,  E.  D.  Penn.     Mar.  6,  1899.) 

Dallas,  J.]     *  Rood  et  al.  v.  Evans  d  a/.,  92  Fed.  Rep.  371. 

6.  A  change  of  form  does  not  avoid  infringement  of  a  patent 
unless  the  patentee  specifies  a  particular  form  as  a  means  by 
which  the  effect  of  the  invention  is  produced,  or  otherwise  con- 
fines himself  to  the  particular  form  of  what  he  describes.  Even 
where  a  change  of  form  somewhat  modifies  the  construction, 
the  action,  or  the  utility  of  a  patented  thing,  non-infringement 
will  seldom  result  from  such  a  change.  (C.  C. ,  N.  D.  Cal, 
Jan.  23,  375.) 

Morrow,  J.]     *Risdon  Locomotive  &  Iron  W'ks  v.  Trent,  92 
Fed.  Rep.  375. 

7.  An  infringer  cannot  evade  liability  for  his  infringement  by 
deliberately  diminishing  the  utility  of  the  invention,  without 
materially  changing  its  form,  its  chief  function,  or  its  manner 
of  operation.      (C.  C.  A.,  6th  Cir.     Mar.  7,  1899.) 

Taft,  J.]     *Penfield  v.  Chambers  Bros.  Co.,  92  Fed.  Rep.  630. 

8.  It  is  an  infringement  for  the  licensee  of  the  owner  of  a 
patent  for  a  machine  for  setting  lacing  studs  to  use  the  machine 
for  setting  studs  obtained  from  others,  where  the  conditions  of 
the  license  are  that  the  licensee  shall  only  use  the  studs  manu- 
factured by  the  licensor,  the  studs  themselves  not  being  pat- 
ented.     (C.  C,  D.  Mass.     July  29,  1898. ) 

Lowell,  J.]     '-^ Tubular  Rivet  &  Stud  Co.  v.  O'Brien  et  al,  93 
Fed.  Rep.  200. 

9.  By  the  general  principles  of  law  and  by  analogy  with  other 
torts,  a  director  of  a  corporation  who,  as  director  by  vote  or 
otherwise,  specifically  commands  the  subordinate  agents  of  the 
corporation  to  engage  in  the  manufacture  of  an  infringing  article, 
is  liable  individually  in  an  action  at  law  for  damages  brought 
by  the  owner  of  the  patent  so  infringed.  As  with  other  in- 
fringers, it  is  immaterial  whether  the  director  knew  or  was 
ignorant  that  the  article  manufactured  and  sold  did  infringe  a 
patent.      (C.  C.  A.,  1st  Cir.     Apr.  12,  1899.) 

Low^ELL,  J.]     *Nat'l  Cash  Register  Co.  v.  Leland  et  al.     Same 
V.  Wright  et  al,  94  Fed.  Rep.  502. 


INFRINGEMENT.  113 

10.  One  may  not  escape  infringement  by  the  mere  joinder  of 
two  elements  into  one  integral  part.  If  the  united  part  effects 
the  same  results  in  substantially  the  same  way  as  tiie  separate 
parts  before  the  union,  the  change  is  colorable.  (C.  C.  A.,  6th 
Cir.     May  2,  1899.) 

LuRTON,  J.]     *  Bundy  Mfg.  Co.  v.  Detroit  Time-Register  Co., 
94  Fed.  Rep.  524. 

11.  An  improvement  may  itself  be  patentable,  but  the  in- 
ventor of  an  improvement  accpiires  no  right  to  a})])r(tpriate  the 
main  invention  to  which  his  iniprovement  relates;  and  it  is  of 
no  consequence  if  the  patented  article  be  so  dealt  with  as  to 
impair  its  usefulness,  if  its  essential  features  l)e  retained. 
(C.  C,  E.  D.  Penn.     May  20,  ■;899.) 

Dallas,  J.]     *  Smith  d  al.  v.  Ulrich,  94  Fed.  Rep.  865. 

12.  A  person  will  not  be  permitted  to  appropriate  a  patented 
invention  by  adding  thereto  a  new  function  which  in  no  way 
changes  the  action  of  the  patented  combination.  (C.  C,  N.  D.. 
N.  Y.     June  14,  1899.) 

CoxE,  J.]     *  Consolidated  Fastener  Co.  v.  Hays  et  al.,  95  Fed. 
Rep.  168. 

13.  That  the  infringing  device  is  so  constructed  as  to  secure 
only  a  part  of  the  advantages  derived  from  the  device  infringed 
is  no  defense;  where  the  essential  features  of  an  invention  have 
been  appropriated,  it  is  immaterial  that  the  infringing  device 
works  poorly  or  is  not  so  practicable  as  the  one  infringed. 
(C.  C,  S.  D.  N.  Y.     June  13,  1899.) 

TowNSEND,  J.]     *Cimiotti  Unhairing  Co.  et  al.  v.  Bowsky,  95 
Fed.  Rep.  474. 

14.  Where  the  president  of  a  recently  organized  corporation 
was  at  the  time  of  organization  a  licensee  under  complainant's 
patent,  and  the  treasurer  had  but  a  short  time  before  made  a 
compromise  with  the  complainant  for  past  infringements,  Held, 
that  their  knowledge  was  the  knowledge  of  the  corporation,  and 
in  a  suit  against  the  corporation  for  infringement  of  the  patent, 
the  corporation  is  precluded  from  setting  up  that  tiie  infringe- 


114  INFRINGEMENT. 

ment  was  entered  upon  under  the  belief  that  the  complainant's 
rights  were  worthless  or  abandoned.      (C.  C. ,  D.  N.  J.) 
KiRKPATRicK,  J.]     *Ryan  v.   Newark  Spring  Mattress  Co.,  96 
Fed.  Rep.  100. 

II.  Claims  for  Combination. 

1.  In  a  patent  for  a  combination  the  alleged  infringing 
machine  must  contain  all  of  the  elements  of  the  combination  or 
their  mechanical  equivalents.  (Prouty  v.  Ruggles,  16  Pet.  337; 
Stimpson  v.  Ry.  Co.,  10  How.  329;  Eames  v.  Godfre}',  1  Wall. 
78;  Seymour  v.  Osborne,  11  Wall.  516;  Dunbar  v.  Myers,  94 
U.  S.  187;  Fuller  i-.  Yentzer,  94  U.  S.  298;  Merrills.  Yeomans, 
94  U.  S.  568;  Water-Meter  Co.  v.  Desper,  101  U.  S.  332;  Miller 
V.  Brass  Co.,  104  U.  S.  350;  Rowell  v.  Lindsay,  113  U.  S.  97; 
5  Sup.  Ct.  507.)  (C.  C.  A.,  9th  Cir.  Oct.  24,  1898.) 
JNIoRROW,  J.]     *  Norton  et  al.  v.  Jensen,  90  Fed.  Rep.  415. 

2.  Where  the  specification  describes  some  details  of  the  de- 
vice which  are  made  elements  of  tlie  claim  and  which  are  not 
essential  to  the  combination  covered  by  the  claim,  it  is  not 
essential  to  constitute  an  infringement  that  the  infringing  device 
should  contain  such  details.  A  description  of  such  details  is  to 
be  held  as  only  pointing  out  the  better  method  of  using  the 
combination.     (C.  C.  A.,  1st  Cir.     Dec.  9,  1898.) 

Putnam,  J.]"     *  City  of  Boston  v.  Allen,  91  Fed.  Rep.  248. 

3.  Where  a  patent  is  limited  b}'  the  express  terms  of  the 
claim,  as  well  as  by  the  description  in  the  specification  to  the 
special  details  of  construction,  it  is  not  infringed  by  a  construc- 
tion which  omits  one  of  the  details  with  a  corresponding  omis- 

ion  of  function.      (C.  C.  A.,  2d  Cir.     Apr.  4,  1899.) 
Wallace,  J.]     *  Tower  v.  Eagle  Pencil  Co.,  94  Fed.  Rep.  361. 

III.  Contributory. 

1.  Where  a  defendant  is  engaged  delilierately  in  manufactur- 
ing and  selling  a  device  designed  and  inteijded  by  him  to  enable 
an  individual  user  thereof  to  employ  complainant's  patented 
process,  said  device  being  useful  for  no  other  process  than  in 
the  practice  of  said  process,  he  is  guilty  of  intentional  contribu- 
tory infringement.  (C.  C,  E.  D.  Mo.,  E.  D.  Dec.  27,  1898.) 
Adams,  J.]  *New  York  Filter  Mfg.  Co.  v.  Jackson,  91  Fed. 
Rep.  422. 


INFRINGEMENT.  115 

2.  Where  the  defendant  was  a  luemlxr  of  a  firm  of  architects 
which  advertised  by  means  of  circulars  and  otherwise  to  furnish 
mills  similar  to  the  one  which  is  found  to  infringe,  and  while 
never  having  had  a  foundry  or  machine  shop  or  iron  works  of 
their  own  when  orders  were  secured,  the  firm  have  invited  bids 
from  various  manufacturers  for  making  the  required  machinery 
from  plans  furnished  by  themselves;  and  said  defendant  having 
made  i)lans  for  the  infringing  mill  Avhich  the  owner  made  at  his 
own  uianufactor}^,  Held,  that  his  position  is  that  of  a  contrib- 
uting infringer.  (C.  C,  N.  D.  Cal.  Jan.  2>\,  1899.) 
Morrow,  J.]     *Risdon  Iron  &  Locomotive  \\''ks  r.  Trent,  92 

Fed.  Rep.  375. 

3.  A  person  who  sells  a  machine  which  is  useful  only  for 
the  purpose  of  making  a  patented  article,  or  makes  such  sale 
with  the  knowledge  that  the  thing  sold  is  to  be  used  to  produce 
an  infringing  article,  is  himself  liable  as  an  infringer.  (C.  C. , 
E.  D.  Penn.     Feb.  25,  1899.) 

Dallas,  J.]     *  American  Graphophone  Co.  v.  Hawthorne  et  aJ., 
92  Fed.  Rep.  516. 

4.  One  who  sells  an  unpatented  article  to  another,  knowing 
the  use  to  be  made  of  it  becomes  lialjle  as  a  contributory  in- 
fringer if  the  proposed  use  is  an  infringement  of  a  patent. 
(C.  C,  D.  Mass.     July  29,  1898.) 

Lowell,  J.]     *  Tubular  Rivet  &  Stud  Co.  v.   O'Brien  d  al.,  93 
Fed.  Rep.  200. 

5.  The  doctrine  of  contributorv  infringement  has  never  been 
applied  to  a  case  where  the  thing  alleged  to  be  contributed  is 
one  of  general  use,  suitable  to  a  great  variety  of  other  methods 
of  use,  and  especially  where  there  is  no  agreement  or  definite 
purpose  that  the  thing  sold  shall  l)e  employed  with  other  things 
so  as  to  infringe  a  patent  right.  (C.  C,  W.  I).  Mich.  S.  D. 
June  13,  1899.) 

Severens,  J.]  ^^ Edison  Electric  Light  Co.  et  al.  r.  Peninsular 
Light,  Power  &  Heat  Co.  et  al,  95  Fed. 
Rep.  669. 

IV.   By  Citie3  and  Corporations. 

Where  a  city  accepted  a  bid  for  electric  light  and  gas  fixtures, 


116  INFRINGEMENT. 

and  purchased  the  same  after  having  been  notified  that  they 
were  being  sold  in  infringement  of  a  patent,  taking  a  bond  of 
indemnit}'  from  the  bidder  against  the  result  of  lawsuits,  such 
city  has  no  equity,  on  the  ground  of  impropriety  of  enjoining  a 
municipal  corporation,  to  claim  exemption  from  a  preliminary 
injunction  against  using  the  fixtures  pending  a  suit  for  the  in- 
fringement, particularly  where  other  fixtures  can  be  substituted 
with  little  delay.  (C.  C.  A.,  2d  Cir.  Apr.  4,  1899.) 
Shipman,  J.]  *Pelzer  v.  City  of  Binghampton  el  al,  90  Fed. 
Rep.  823. 

V.  Process. 

Two  processes  cannot  be  said  to  be  substantially  alike  where 
the  successive  steps  which  they  involve  are  different;  and  where 
several  of  the  steps  which  are  requisite  to  the  one  are  wholly 
omitted  from  the  other,  identity  of  method  cannot  exist.  (C. 
C.  A.,  3d  Cir.     Dec.  6,  1898.) 

Dallas,  J.]     *  United  States  Glass  Co.  v.  Atlas  Glass  Co.,  90 
Fed.  Rep.  724. 

VI.  Particular  Cases. 

1.  The  legitimate  rights  of  the  holder  of  a  patent  for  a  valance 
for  hammocks,  canopies,  lambrequins  and  similar  articles 
where  hanging  drapery  is  commonly  used,  cannot  be  invaded 
by  one  who  protects  from  wear  the  bottom  of  women's  skirts; 
the  two  fields  are  wide  apart  and  have  nothing  in  common. 
(C.  C,  S.  D.  N.  Y.     Nov.  15,  1898.) 

CoxE,  J.]     *  Palmer  et  al.  v.  De  Yongh,  90  Fed.  Rep.  281. 

2.  The  only  differences  between  the  patented  device  and  the 
alleged  infringing  device  are:  (1)  in  the  latter,  the  catch  is  re- 
leased by  a  movement  radially  outward,  while  in  the  former  the 
releasing  movement  is  radially  inward.  In  this  respect,  the 
two  devices  are  mechanical  equivalents,  the  one  of  the  other. 
(2)  The  device  of  the  patent  is  operated  by  a  flat  spring,  one 
end  of  which  is  attached  to  a  stud  depending  from  a  spring 
plate;  the  infringing  device  is  operated  by  a  spiral  spring,  the 
corresponding  end  of  which  is  attached  either  to  a  small  cap  at 
the  top  of  the  hub  just  beneath  the  operating  handle,  or  is  fas- 


INFRINGEMENT,  117 

tened  b}'  passing  tliroiigli  tlio  handle  itself,  the  ca])  in  that  case 
being  omitted.  Held,  that  the  si)iral  spring  is  the  eqnivalent  of 
the  tlat  spring,  and  the  cap  in  which  the  end  of  the  spring  is  in- 
serted is  the  equivalent  of  the  spring  plate  and  depending  stud, 
and  that  the  patent  is  infringed.  (C.  C.  A.,  1st  Cir.  Mar.  13, 
1899.) 

Lowell,  J.]     *Hart  &  Hegeman  Mfg  Co.  v.  Anchor  Electric 
Co.  d  al. ,  92  Fed.  Rep.  657. 

3.  Where  a  patent  for  a  roller-coasting  structure  claims 
"  tracks  running  parallel  with  each  other  and  having  the  start- 
ing and  terminal  stations  at  the  same  elevation."  Held,  that 
mathematical  precision  as  to  elevation  is  not  necessary  and  not 
prescribed,  and  that  the  claim  is  infringed  by  another  similar 
structure  where  the  difference  in  elevation  of  starting  and  ter- 
minal stations  is  only  six  inches  or  a  foot.  (C.  C.  A.,  od  Cir. 
May  1,  1899.) 

AcHESON,  J.]     *  Thompson  v.  Third  Avenue  Traction  Co.  et  a/., 
93  Fed.  Rep.  924. 

4.  A  claim  for  a  combined  bathing  shoe  and  stocking  having 
the  sole  formed  of  cork  coated  with  rubber  cement  and  having 
an  outer  covering  of  cotton  or  other  fabric,  Held,  not  infringed 
by  a  similar  shoe  and  stocking  with  a  sole  made  of  linoleum 
and  an  outer  covering  of  canvas.  (C.  C. ,  S.  D.  N.  Y.  May  26, 
1899.) 

Shipman,  J.]     *S.  Rauh  &  Co.  v.  Guinzbnrg,  95  Fed.  Rep.  151. 

5.  The  Helouis  process  of  treating  lime  crayons  which  is 
relied  upon  as  anticipation  in  the  case  seems  (]uite  different  in 
object  and  result  from  that  of  the  patent.  Within  the  broad 
range  of  equivalents  indicated  in  Welsbach  Light  Co.  v.  Sun- 
light Incandescent  Gas  Lamp  Co.,  87  Fed.  Rep.  221,  the  process 
of  defendant  is  an  infringement,  and  preliminary  injunction 
ordered.     (C.  C,  S.  D.  N.  Y.     July  19,  1899.) 

Lacombe,  J.]     *  Welsbach   Light  Co.   v.  New   York   Chemical 
Refining  Co.,  95  Fed.  Rep.  1007. 


118  INJUNCTION. 

Injunction. 

I.   In  General. 
II.  Dissolution. 

III.  Preliminary. 

(a)   In  General. 
(6)    When  Granted. 
(c)     When  Denied. 

IV.  Prior  Judgment. 

V.   Public  Acquiescence. 
VI.  Violation  of. 

I.  In  General. 

1.  It  is  not  the  purpose  of  the  patent  laws  to  compel  the  dis- 
continuance of  the  lawful  manufacture  and  sale  of  known  pro- 
ducts in  public  use  by  reason  of  the  mere  recognition  by  some 
one  that  they  possess  merits  not  theretofore  appreciated.  (C.  C. , 
D.  N.  Jer.  '  Feb.  13,  1899.) 

Bradford,  J.]     *McEwan  Bros.  Co.  v.  McEwan  et  al,  91  Fe(,l. 
Rep.  787. 

2.  Tbe  owner  of  a  patent  is  entitled  to  protection  against  the 
repetition  of  accidental  or  unintentional  infringements.  (C.  C. 
A.,  2d  Cir.      :\hiy  25,  1899.) 

Lacombe,  J.]     =^ Thompson  et  al  r.  N.  T.  Bushnell  Co.,  96  Fed. 
Rep.  238. 

II.  Dissolution. 

Where  the  Circuit  Court  granted  an  injunction  pendente  lite 
upon  the  theory  that  the  complainant's  construction  of  the 
claim  alleged  to  have  been  infringed  had  been  positively  adopted 
by  the  Circuit  Court  of  Appeals  in  a  prior  suit  U})on  the  same 
patent,  the  only  question  to  be  determined  on  appeal  from  the 
order  granting  the  injunction  is  whether  that  theory  is  well 
grounded,  by  ascertaining  the  scope  of  the  decision  in  the  prior 
suit,  and  Held^  that  the  injunction  was  granted  on  a  misunder- 
standing as  to  the  scope  of  such  decision  and  the  order  granting 
the  same  reversed.      (C.  C.  A.,  2d  Cir.) 

Shipman,  J.]      *  American  Graphophone  Co.   v.   Nat'l  Gramo- 
phone Co.  et  al,  92  Fed.  Rep.  364. 


INJUNCTION.  119 

III.   Preliminary. 

(")   In  General. 

1.  The  weight  to  be  given  to  tlie  circuiut-tanees  of  non- 
disclosure by  the  defendant  or  his  witnesses  upon  a  prehminnry 
hearing  with  reference  to  tlic  question  of  infringement  was  a 
matter  which  addressed  itself  to  the  court  l)elow  in  the  exercise 
of  a  sound  legal  discretion  as  to  whether  a  preliminary  injunc- 
tion should  issue  or  not.  I'nless  that  discretion  has  been 
abused  the  action  of  the  couit  below  should  not  be  reversed. 
(C.  C.  A.,  6th  Cir.      Nov.  9,  1898.) 

Taft,  J.]     *Societe  Anonyme  du  Filtre  Chamberland  Systeme 
Pasteur  et  al.  v.  Allen  et  al.,  90  Fed.  Rep.,  815. 

2.  The  function  of  a  court  of  appeals  in  reviewing  an  order 
of  a  lower  court  granting  or  refusing  a  preliminary  injunction 
is  such  that  it  may  properly  affirm  an  order  refusing  a  pre- 
liminary injunction  in  one  case  and  an  order  granting  it  in 
another  on  substantially  the  same  evidence,  because  it  is  easy 
to  conceive  a  case  presenting  upon  a  preliminary  hearing  such 
an  evenly  balanced  controversy  that  the  court  above  would 
affirm  the  action  of  the  court  below,  whether  one  way  or  the 
other,  when  that  action  involves  the  exercise,  not  of  exact 
judicial  judgment,  but  merely  judicial  discretion.  -^^Id. 

3.  Tlie  (juestion  to  be  determined  on  appeal  from  an  order 
denying  a  preliminary  injunction  is  whether  the  discretion  of 
the  court  below  was  improvidently  exercised,  and  not  whether 
upon  final  hearing,  upon  full  view  of  all  ')f  the  facts  in  the  case, 
the  appellate  court  would,  upon  the  evidence  before  it,  reach 
the  same  conclusion  as  the  court  below.  To  justify  an  appellate 
court  in  reversing  an  order  of  this  kind  it  must  be  (piite  clearly 
apparent  that  a  mistake  was  committed  by  the  court  below. 
(C.  C.  A.,  Gth  Cir.     Mar.  7,  1899.) 

Severens,  J.]     *  Proctor  &  Gamble  Co.  r.  Globe  Refining  Co., 
92  Fed.  Rep.  857. 

4.  The  three  things  essential  to  maintaining  a  preliminary 
injunction  in  a  patent  case  are:  (1)  That  the  i)atent  is  valid; 
(2)  that  the  plaintiH'  is  the  owner  of  a  legal  or  e(|uitalile  interest 
therein,  and  (3)  that  the  defendant  is  about  to  conmiit  an  act 
of  infringement.     In  order  to  entitle  a  complainant  to  a  i)rc- 


120  ■  INJUNCTION. 

liminary  injunction  when  the  patent  sued  upon  has  never  been 
adjudicated,  he  must  show  that  the  pubhc  has  long  used  the 
invention  and  has  acquiesced  in  the  vahdity  of  the  patent;  and 
has  never  undertaken  by  htigation  to  question  the  patentee's 
exckisive  rights  thereunder  or  the  validity  thereof.  (C.  C. , 
N.  D.  Ohio,  E.  D.  Dec.  3,  1898.) 
Ricks,  J.]     *  Elliott  d  al.  v.  Harris  d  ah,  92  Fed.  Rep.  374. 

5.  The  rule  as  to  public  acquiescence  or  prior  adjudication  to 
support  and  warrant  a  preliminary  injunction  is  as  applicable 
to  the  case  of  design  patents  as  it  is  to  patents  for  machines. 
(C.  C,  D.  Conn.      Feb.  20,  1899.) 

TowNSEND,   J.]     *  Smith  v.    Meriden   Britannia  Co.,    92   Fed. 
Rep.  1003. 

III.    PEELi:\riNARY. 

(6)    ]Vhen  granted. 

1.  Infringement  of  the  patent  by  defendant  prior  to  the  insti- 
tution of  this  suit  clearly  appears  by  the  use  of  an  infringing 
attachment  which  may  be  readily  connected  and  disconnected, 
and  the  fact  that  shortly  prior  to  the  institution  of  this  suit,  and 
when  it  was  itnminent,  defendant  disconnected  such  attachment 
and  informed  the  complainant  that  he  would  no  longer  use  the 
same,  does  not  constitute  sufficient  ground  for  denying  a  pre- 
liminary injunction.  The  ada]^tal>ility  of  the  device  to  such 
facile  changes  affords  a  constant  temptation  to  defendant,  as 
well  as  a  constant  menace  to  com]i]ainant,  and  complainant  is 
entitled  to  greater  security  against  a  once-existing  infringement 
than  the  mere  statement  by  defendant  that  he  will  no  longer 
infringe.  (C.  C,  E.  D.  Mo.  E.  D.  Apr.  20,  1899.) 
Adams,   J.]     *New  York  Filter  Mfg.    Co.  v.   Chemical  Bl'dg 

Co.,  93  Fed.  Rep.  827. 

2.  Upon  the  question  of  infringement,  the'complainant  must 
in  order  to  obtain  a  preliminary  injunction,  satisfy  the  court 
beyond  a  reasonable  doubt.  (C.  C,  N.  D.  N.  Y.  May  21, 
1899. ) 

CoxE,  J.]     *  Consolidated  Fastener  Co.   r.   American  Fastener 
Co.,  94  Fed.  Rep.  523. 

3.  Where  the  court  starts  with  the  projiosition  that  a  patent 


INJUXCTION.  121 

is  valid,  and  since  it  is  not  disputed  that  the  alleged  infringing 
article  responds  to  all  of  the  tests  required  l)y  the  patent,  such 
article  must  be  held  to  be  an  infringement  and  an  injunction 
will  issue.  (C.  C,  S.  D.  N.  Y.  June  8,  1899.) 
Lacombe,  J.]  *  Badische  Anilin  &  Soda  Fabrik  r.  Matheson 
etal.,  94  Fed.  Rep.  1021. 

III.  Preliminary. 

(c)    When  denied. 

1.  Where  an  essential  element  of  a  claim  of  a  patent  is  omitted 
from  the  alleged  infringing  device,  there  is  no  infringenunit  of 
the  claim,  and  assuming  that  the  patent  is  valid,  it  is  limited  in 
scope  by  the  prior  art ;  a  case  of  infringement,  such  as  would 
justify  the  granting  of  a  preliminary  injunction  is  not  made  out 
under  these  circumstances.  (C.  C,  D.  Mass.  Oct.  31,  1898.) 
Colt,  J.]     *  Consolidated  Fastener  Co.  r.  Wisncr  et  aL,  90  Fed. 

Rep.  104. 

2.  Where  the  patent  sued  on  has  never  been  adjudicated  ujxm 
and  the  bill  of  complaint  does  not  disclose  any  use,  or  public 
acquiescence  in  its  validit}',  a  preliminary  injunction  will  not 
be  granted  to  restrain  an  alleged  infringement  of  it.  (C.  C,  D. 
N.  Jer.     Dec.  14,  1898. ) 

KiRKPATRicK,  J.]      *  Richmond  Mica  Co.  v.  De  Clyne  et  al.,  90 
Fed.  Rep.  661. 

3.  Where  the  court  in  a  prior  suit  against  another  defendant 
had  decreed  the  validity  of  the  patent  which  is  the  foundation 
of  the  present  suit,  and  had  enjoined  the  defendant  therein 
from  the  manufacture,  sale  and  use  of  machines  declared  to  be 
infringing,  an  appeal  in  which  suit  is  still  pending,  and  the  de- 
fendants in  the  present  suit  are  users  of  some  21  of  the  infring- 
ing machines,  in  their  extensive  business  in  which  they  employ 
some  200  persons,  and  have  large  orders  for  future  delivery  of 
the  products  of  said  machines,  and  are  financially  responsible  to 
answer  in  damages  for  any  award  which  may  be  made  against 
them,  while  the  complainant  has  not  been  at  any  time  and  is 
not  now  able  to  supply  defendants  with  the  patented  machine, 
except  gradually  as  they  could  be  built  and  even  then  at  a  large 
expenditure  of  money,  Held,  that  an  injunction  against  the 
use  of  such  infringing,  machines  would  not  be  granted,  for  the 


122  IXJUNCTIOX. 

damages  to  the  defendant  would  far  outweigh  the  advantages 
acermng  to  the  complainant.  (C.  C,  D.  N.  Jer.  Jan.  9,  1899.) 
KiRKPATBicK,  J.]     *  Huntington  Dry  Pulverizer  Co.   et  al.   v. 

Al]>ha  Portland-Cement  Co.   et  al.,   91 

Fed.  Rep.  585. 

4.  A  preliminary  injunction  Avas  denied  where  it  sought  to 
prevent  the  replacing  of  a  part  of  a  patented  machine  which 
wears  out  quickly,  even  though  such  })art  is  the  subject-matter 
of  a  separate  claim  of  the  patent  and  spfcially  protected  thereby. 
(C.  C,  N.  D.  Cal.     Mar.  16,  1899.) 

Morrow,  J.]     ^^  Alaska  Packers'  Ass'n  r.  Pacific  Steam  Whal- 
ing Co.  et  al,  9o  Fed.  Pvep.  672. 

5.  Where  there  is  a  conflict  of  testimon)^,  both  expert  and 
otherwise  it  would  be  an  unwise  exercise  of  judicial  discretion  to 
grant  a  restraining  order  before  the  hearing  upon  pleadings  and 
proofs.      (C.  C,  S.  D.  N.  Y.     Mar.  6,  1899.) 

Lacombe,    J.]       '^Thomson-Houston    Electric    Co.    v.    Bullock 
Electric  Co.,  93  Fed.  Rep.  991. 

6.  Where  the  patent  has  never  been  adjudicated  and  there  has 
been  no  general  acquiescence  in  its  validity,  and  infringement  is 
stoutly  denied,  the  rule  is  well-nigh  universal  that  a  preliminary 
injunction  should  not  issue.  (C.  C,  N.  D.  N.  Y.  May  21, 
1899.) 

CoxE,  J.]     ^'Consolidated  Fastener  Co.   v.   American  Fastener 
Co. ,  94  Fed.  Rep.  523. 

7.  Upon  an  application  for  preliminary  injunction  the  ques- 
tion was  raised  Avhether  or  not  b}'  reason  of  the  lapsing  of  a 
prior  foreign  patent  subsequent  to  the  application,  but  prior  to 
the  issue  of  the  United  States  patent,  such  United  States  patent 
was  improi^erly  issued.  Under  decisions  of  the  Supreme  Court 
there  is  so  much  doubt  as  to  the  correct  answer  to  this  question, 
that  it  should  not  be  decided  upon  preliminary  motion,  but 
upon  final  hearing,  so  that  the  defeated  party  may  be  in  a  posi- 
tion to  apply  to  that  court  for  a  certiorari  should  it  be  so  ad- 
vised.     (C.  C.,  S.  D.  N.  Y.     July  12,  1898.) 

Lacombe,   J.]     ^^Welsbach  Light  Co.   v.   Apollo  Incandescent 
Gaslight  Co.,  94  Fed.  Rep.  1005. 


INJUNCTION.  123 

8.  AMiere  a  prior  foniun  i):itent  lapsed  In'twccn  tlic  ilate  of 
application  for  the  ]>alrnl  in  suit  and  the  date  of  its  issuance, 
questions  are  raised  as  to  the  validity  of  the  patent  which  ou<rht 
not  to  be  decided  U[)oii  a  ))irliniinarv  motion,  and  where  a  i)re- 
liniinarv  injunction  has  been  denied  in  another  subsecjuent  suit 
U}ion  these  facts,  there  is  no  good  reason  wiiy  a  {)articular 
defendant  should  be  enjoined  while  others  are  left  free  to  in- 
fringe, and  a  motion  to  vacate  a  preliminary  injiuiction  will  be 
granted.      (C.  C,  S.  D.  N.  Y.     Aug.  1,  1898.) 

Lacombe,  J.]     *  Welsbach  Light  Co.  v.  Rex  Incandescent  Light 
Co.,  94  Fed.  Rep.  1005. 

9.  A  preliminary  injunction  should  never  be  awarded  where 
the  right  is  doubtful  or  the  wrong  uncertain;  and  in  a  patent 
case  it  should  not  be  aAvardcd  where  infringement  is  not  clearly 
established.      (C.  C.  A.,  8d  Cir.     June  1,  1890.) 

Dallas,  J.]      *  Blakey  et  ah  v.  Xat'l  Mfg.  Co.,  95  Fed.  Rep.  136. 

10.  Where  the  question  of  infringement  is  doubtful  and  de- 
pends for  its  determination  u])on  a  broader  construction  of  the 
claims  of  the  patent  in  suit  than  was  touched  upon  in  ])rior 
adjudications,  it  should  not  he  resolved  upon  a  motion  for  ])re- 
liminary  injunction,  liut  should  be  reserved  until  the  final 
hearing  of  the  cause.  (C.  C.  A.,  2(1  Cir.  INIay  25,  1899.) 
Per  CrRiA:si.]     *  Sprague    Electric    Railway  &    Motor   Co.    v. 

N&ssau  Electric  Ry.  Co.,  95  Fed.  Rep.  821. 

IV.   Prior  Judgment. 

1.  Where  the  validity  of  a  patent  has  l)cen  estal>lishr(l  by 
repeated  adjudications,  and  no  iieM'  case  has  been  made  out 
against  its  validity  the  earlier  decisions  arc  to  be  folloAved  in 
granting  a  motion  for  prelinn'nar}'  injunction.  (C.  C. ,  S.  D. 
N.  Y.     Feb.  26,  1898.) 

Laco:mbe,  J.]      *  New  York  Filter  ^Nlfg.  Co.  v.  Loomis-Manning 
Filter  Co.,  91  Fed.  Rep.  421. 

2.  Where  the  validity  of  a  patent  has  been  repeatedly  upheld 
and  injunctions  have  been  granted  against  its  infringement,  its 
validity  is  no  longer  an  open  C{uestion  upon  a  motion  for  a  pre- 
liminary injunction,  unless  some  new  defense  is  interjjosed  and 
the  evidence  oiJered  to  su]iport  it  is  so  cogent  and  persuasive  as 


124  INJUNCTION. 

to  impress  the  court  with  the  conviction  that,  if  it  had  been 
presented  and  considered  in  the  former  case,  it  would  probably 
have  availed  to  a  contrary  conclusion.  (C.  C,  E.  D.  Mo.,  E.  D. 
Dec.  27,  1898.) 

Adams,  J.]     *New  York  Filter  Mfg.   Co.  v.  Jackson,  91  Fed. 
Rep.  422. 

3.  While  it  may  not  be  improbable  that  the  defendant  may 
succeed  at  the  final  hearing  in  establishing  the  defenses  upon 
which  it  relies  in  defeating  complainant's  patent,  yet  if  the  new 
evidence  is  not  cogent,  the  questions  presented  thereby  should 
not  be  determined  adversely  to  complainants  upon  affidavits, 
with  the  result  of  depriving  him,  upon  motion  for  a  preliminary 
injunction,  of  the  benefit  of  a  prior  adjudication  in  his  favor 
after  a  strenuously  contested  litigation.  (C.  C.  A.,  2d  Cir. 
Jan.  5,  1899.) 

Per  Curiam.]   *  Doig  v.  Morgan  Machine  Co. ,  91  Fed.  Rep.  1001. 

4.  Where  there  has  been  a  prior,  thoroughly  considered  de- 
cision on  the  question  of  infringement,  the  rule  as  to  prior  ad- 
judication supporting  a  preliminary  injunction,  necessarily 
applies  with  the  same  effect  as  to  a  question  of  validity  of  the 
patent.  In  many  cases  one  issue  is  involved  in  the  other,  and 
in  either  case  the  court  to  which  the  later  application  for  pre- 
liminary injunction  is  made  has  a  right  to  rely  on  a  presump- 
tion that  all  the  defenses  of  value  were  presented  and  considered 
in  the  earlier  litigation.  A  different  practice  would  deprive  an 
inventor  of  the  substantial  advantages  of  protracted  litigation  in 
the  first  case,  and  would  subject  him,  on  the  subsequent  appli- 
cation, to  all  the  labor  and  cost  of  investigating  the  merits  on 
every  discovery  of  some  supposed  anticipatory  matter,  not 
brought  forward  in  the  prior  suits.  Therefore,  unless  on  all 
such  issues  the  court  accepts  the  results  of  such  prior  litigation 
except  for  some  clear  and  cogent  matter,  the  beneficent  rule 
with  reference  thereto  would  be  lost.  (C.  C,  D.  Mass.  Mar. 
15,  1899.) 

Putnam,  J.]     *  Duff  Mfg.  Co.  v.  Norton,  92  Fed.  Rep.  921. 

5.  Where  the  patents  sued  on  have  been  the  subject  of  stren- 
uous litigation  in  the  federal  courts  of  one  circuit  where  their 
validity  was  sustained  both  by  the  Circuit  Court  and  the  Cir- 


INJUNCTION.  125 

cuit  Court  of  Appeals,  the  general  rule  of  comity  requires  the 
court  of  another  circuit  to  award  a  preliminary  injunction,  if 
there  is  infringement,  and  postpone  to  the  final  hearing  the  de- 
termination of  the  questions  relating  to  the  validity  of  the 
patents,  unless  there  is  some  new  evidence  of  such  a  clear  and 
persuasive  character  as  to  leave  no  fair  doubt  that  the  former 
decisions  were  erroneous  in  point  of  fact  and  would  have  been 
different  if  the  new  matter  had  been  before  the  court.  (C.  C. , 
\¥.  D.  Mich.     Aug.  3,  1898.) 

Severens,  J.]  *  Duff  Mfg.  Co.  v.  Kalamazoo  R.  R.  Velocipede 
&  Car  Co.,  94  Fed.  Rep.  154. 
6.  When  a  patent  has  been  estal)lished  by  a  decision  of  a 
Circuit  Court  after  careful  consideration  upon  a  full  record, 
another  judge  sitting  subsequently  in  the  same  court  upon  ap- 
plication for  preliminary  injunction  on  ex  -parte  papers,  might 
well  deem  himself  constrained,  contrary  even  to  his  own  judg- 
ment, to  adopt  the  rulings  of  his  own  court,  since  he  does  not  sit 
as  a  court  of  review  to  reverse  upon  sul)8tantially  the  same 
record  the  decision  of  a  judge  of  co-ordinate  jurisdiction.  A 
re-examination  of  the  rulings  made  upon  the  original  hearing  is 
to  be  sought,  not  in  the  Circuit  Court,  but  in  the  Circuit  Court 
of  Appeals.  (C.  C,  S.  D.  N.  Y.  May  26,  1899.) 
Lacombe,  J.]  *Welsbach  Light  Co.  v.  Rex  Incandescent  Light 
Co.,  94  Fed.  Rep.  lOOG. 

V.  Public  Acquiescence. 

In  order  to  take  the  place  of  an  adjudication,  accjuiescence 
must  be  long  continued  in  such  circumstances  as  to  induce  the 
belief  that  infringements  would  have  occurred  but  for  the  fact 
that  a  settled  conviction  existed  in  the  minds  of  manufacturers, 
vendors  and  users  that  the  patent  was  valid  and  must  be  re- 
spected. A  patent  which  is  not  molested  sin)ply  because  it  is 
for  no  one's  interest  to  infringe,  is  not  ac(iuiesced  in  within  the 
legal  acceptation  of  that  term.  (C.  C,  N.  D.  N.  Y.  :May  21, 
1899.) 

CoxE,  J.]     *  Consolidated   Fastener  Qo.  v.  American   Fastener 
Co.,  94  Fed.  Rep.  523. 

VI.  Violation  of. 

1.   Where  the  question  of  the  violation  by  a  defendant  of  an 


126  INTERFERENCES. 

injunction  issued  in  a  suit  for  infringement  of  a  patent,  depends 
upon  Avhether  or  not  a  new  article  sold  by  defendant  since 
the  granting  of  the  injunction  is  an  infringement  of  complain- 
ant's patent,  which  is  an  intricate  question  dependent  Uj)on 
structure,  requiring  a  com])arison  of  the  article  with  others  and 
a  consideration  of  other  ])atents,  the  court  will  not  attenj])t  to 
determine  it  on  a  motion  for  an  attachment,  but,  no  intentional 
violation  being  claimed,  will  deny  the  motion,  and  leave  the 
complainant  to  his  remedy  b}^  a  new  bill.  (C.  C. ,  S.  D.  N.  Y. 
Feb.  28,  1899.) 

Wheeler,  J.]      *  United  States  Playing-Card  Co.  v.   Spalding 
Bros,  et  al^  93  Fed.  Rep.  822. 

2.  ^Mlere  a  suit  for  the  infringement  of  a  patent  was  ])rought 
against  "Frank  Armstrong,  alias  James,"  defendant,  his  true 
name  being  James,  and  an  order  was  issued  restraining  "the 
said  defendant  Frank  Armstrong"  from  further  infringement, 
the  order  being  served  u})on  the  defendant.  Held,  that  he  being 
in  fact  the  person  guilty  of  the  infringement,  he  was  bound  by 
the  order,  and  his  subsequent  violation  of  the  order  subjected 
him  to  punislnnent  for  contempt.  (C.  C. ,  S.  D.  N.  Y.  May 
24,  1899.) 

Lacombe,  .J.]     *  Dickerson  v.  Armstrong,  94  Fed.  Rep.  8G4. 

3.  An  order  imposing  a  fine  for  the  violation  of  a  preliminary 
injunction  cannot  be  reviewed  except  upon  an  appeal  from  the 
final  decree  in  the  cause.  (C.  C.  A.,  2d  Cir.  May  25,  1899.) 
DeHayex,  J.]     *  Nassau  Electric  Ry.   Co.  v.  Sprague  Electric 

Ry.  ct  Motor  Co.,  95  Fed.  Rep.  415. 

Interferences. 

I.   In  General. 
II.  Access  to  and  Production  of  Papers. 

III.  Amending  Applications,  Rule  109. 

IV.  Appeal. 

(a)   III  General. 
(6)  No  Appeal  Lies. 
V.   Burden  of  Proof. 
(a)  In  General, 
(h)    When  one  Contestant  is  a  Patentee. 


INTEIJFKHKNCES.  127 

VI.   Declaration  of. 
(a)  In  GencruL 
(6)   Applicddon  tt"  Patent. 

(c)  Claims:  Subjects- Matter  viad  Conflict. 

(d)  Snggexling  Claims. 

(c)   Generic  and  Specific  Claims. 
(./ )  Claims:  Identical  in  Scope. 
VII.   Dissolution. 

(a)  In  Genercd. 

(b)  Ride  122. 

(c)  Time  AlUnvai)le  for  Filing  Motions, 
{d)  Statutorij  bars. 

(e)  D'ansmittal  of  Motion  to  Primary  Examiner. 
VIII.  Effect   of   Patent   Office   Decisions  in  the 

Courts. 
IX.  Ex  parte  Proceedings. 
X.  Issue. 

XI.  Judgment  on  the  Record. 
XII.  •  Motions  Generally. 

XIII.  Practice  on  Final  Hearing  and  after  Judg- 

ment. 

XIV.  Preliminary  Statements. 

(a)  In  General. 

(b)  Amendment  of. 
XV.   Priority. 

(a)  la  Genercd. 

(6)   Abandoned  Experiments. 

(c)  Emploi/cr  and  Employe. 

(d)  Foreign  Patents. 

(e)  Invention  Made  by  Third  Party. 
XVI.   Reduction  to  Practice. 

(a)   In  General. 
(6)   Adnal. 
(c)    Constrnctive. 
(ri)  Diligence. 
(e)   Drawings  &  Models. 
XVI I.  Reinstatement  and  Reopening  of. 


128 


i 

INTERFERENCES. 

XVIII. 

Service  of  Notice. 

XIX. 

Suspension. 

XX. 

Testimony. 

(rt)  In  General. 

(6)    Time  for  Takiiig. 

(c)   Interested  Par-ties. 

(rf)  Irrelevant. 

XXI. 

Vacating  Judgment. 

In  General. 

1.  The  practice  of  the  defeated  party  to  an  interference  at- 
tempting to  retry  the  interference  by  fihng  or  having  filed  in  his 
belialf  another  application  or  by  amending  an  application,  and 
thus  delaying  the  issue  of  a  patent  to  the  successful  party  to  the 
first  interference,  cannot  be  too  strongly  condenmed.  (Feb.  17, 
1899. ) 

DuELL,  C]     Bechman  v.  Wood,  87  0.  G.  1073. 

2.  The   motion    for    reconsideration    of   the   Commissioner's 
decision  of  February  17,  1899,  denied.      (Feb.  23,  1899.) 
DuELL,  C]     Bechman  r.  Wood,  87  0.  G.  1074. 

3.  Where  a  claim  is  suggested  to  an  applicant  and  every 
opportunity  afforded  him  to  place  his  application  in  condition 
for  interference.  Held,  that  his  neglect  to  do  so  fairly  raises  the 
presumption  that  he  is  not  the  inventor  of  the  subject-matter  of 
the  interference.     (Apr.  13,  1899.) 

DuELL,  C]     Ex  parte  Calm,  87  0.  G.  1397. 

4.  Where  an  equitable  owner  of  an  application  involved  in 
interference  petitioned  to  defend  the  interference,  as  applicant 
would  not  do  so,  Held,  that  there  being  no  assignment  of  record 
and  it  appearing  that  the  respective  rights  of  the  parties  have 
been  submitted  for  settlement  to  a  competent  court,  it  is  not 
wise  for  this  Office  to  do  more  than  preserve  the  rights  of  the 
parties  so  far  as  it  is  able.      (Sept.  27,  1899.) 

DuELL,  C]     Reiner  v.  McPhail,  89  0.  G.  521. 

5.  Held,  further,  that  the  applicant  has  the  right  to  conduct . 
the  interference  by  an  attorney  of  his  own  selection.  Id. 

6.  HeUL  further,  that  under  all  the  circumstances  of  the  case 


IXTEHFEHENCES.  129 

the  eqiiital)]('  o^vncM'  is  entitlrd  to  lie  kept  fully  iiifoi'iiicd  (if  the 
status  of  the  interference,  and  to  he  furnislu'd  coiiics  of  the 
interference  proceedings.  Jd. 

II.  Access  to  and  Production  of  Pateks. 

1.  The  purpose  of  rule  lOo  is  to  ]»revent  the  disclosure  of 
other  inventions  than  the  one  in  controversy,  and  not  to  pre- 
vent tlie  disclosure  of  the  full  record  of  the  invention  which  is 
in  controversy.      (Jan.  6,  1899.) 

Greeley,  A.  C]      Hutin  and  Lehlanc  r.  Fairfax,  0()  M8.  Dec. 
142. 

2.  It  was  never  intended  hy  rules  105  and  10(J  that  a  jiaiiy 
should  be  permitted  to  conceal  from  his  opponent  in  interfer- 
ence anything  but  a  clearly  divisible  invention  not  claimed  by 
his  opponent,  and  this  construction  is  in  harmony  with  rule 
108.     (Mar.  27,  1899.) 

DuELL,  C]     Ex  parte  Walrath,  87  0.  G.  1397. 

3.  To  permit  a  party  to  disclose  to  his  opponent  only  the 
claim  involved  in  interference  when  he  has  other  claims  based 
upon  the  same  indivisible  structure  upon  which  the  interfering 
claim  is  based  would  be  in  effect  to  nullify  rule  109.  Id. 

III.  Amending  Applications.     Rule  109. 

1.  Under  rule  109  an  interferent  is  not  restricted  to  the  intro- 
duction of  claims  identical  with  the  issue,  but  may  introduce 
more  specific  claims  directed  to  the  same  subject-matter,  and  if 
he  desires  to  claim  the  invention  at  all,  he  should  be  allowed  to 
do  so  with  as  few  restrictions  as  those  imposed  upon  the  multi- 
plicity and  scope  of  claims  of  an  original  application.  (Jan.  6, 
1899.') 

Greeley,  A.  C]     Crocker  v.  Allderdice,  66  MS.  Dec.  140. 

2.  Rule  109,  under  present  practice,  has  but  little  bearing 
upon  such  cases,  since  the  results  intended  to  be  accomplished 
by  it  are  now  accomplished  prior  to  the  declaration  of  the  inter- 
ference. But  if  the  rule  opens  the  way  to  amendment  to  one 
of  the  parties,  it  also  opens  the  way  to  amendment  to  any  other 
party,  and  neither  is  given  an  unfair  advantage.  Id. 

3.  While  the  purjwse  of  rule  109  is  to  have  the  question  of 
priority  as  to  all  matters  which   can  be  contested  between  the 

^9 


130  INTERFERENCES. 

parties  settled  in  one  proceeding,  it  does  not  follow  that  each  of 
the  claims  admitted  under  the  rule  must  be  such  as  will  consti- 
tute a  separate  count  of  the  interference  issue.  If  they  are 
drawn  to  the  same  subject-matter,  although  they  are  not  of 
the  same  scope  as  those  made  by  the  other  party,  they  are  ad- 
missible notwithstanding  the  fact  that  on  account  of  the  differ- 
ence in  scope  there  is  no  interference  in  fact  under  the  present 
practice.  The  question  of  interference  in  fact  between  the 
claims  is  not  decisive  of  the  question  as  to  whether  they  shall 
be  admitted.  (Feb.  10,  1899.) 
Greeley,  A.  C]     Uebelacker  v.  Brill,  6G  MS.  Dec.  271. 

4.  Motion  to  amend  an  application  in  interference  under  the 
provisions  of  rule  109  should,  if  seasonably  presented,  be 
transmitted  to  the  primary  examiner  for  decision  even  where 
judgment  of  priority  has  been  rendered  on  the  record  under 
rule  114.      (Nov.  25,  1898.)    . 

Greeley,  A.  C]     Dempsey  et  al.  v.  Wood,  86  0.  G.  182. 

5.  It  is  the  policy  of  the  Office  to  have  all  questions  which 
may  be  presented  brought  up  and  considered  at  one  time  and 
in  one  proceeding,  and  since  the  contested  proceedings  are  not 
at  an  end  until  the  limit  of  appeal  has  expired  it  is  proper 
within  that  time  to  make  a  motion  to  amend  under  rule  109 
after  judgment  on  the  record.  Id. 

6.  It  may  be  that  no  substantial  advantage  is  apparent  in  a 
particular  case  for  considering  the  matter  on  motion,  but  it  is 
always  best  that  the  course  of  procedure  should  follow  that 
seemingly  indicated  in  the  rule  unless  there  is  some  good  reason 
why  the  rule  does  not  and  was  not  intended  to  apply.         Id. 

7.  It  is  a  well-settled  and  long-established  practice  of  the 
Patent  Office  to  allow  amendn)ents  to  applications  to  be  made 
under  proper  circumstances  to  supply  omissions  and  defects  in 
the  original  specifications  and  claims  as  filed  which  have 
occurred  by  mistake,  oversight,  or  inadvertence,  or  want  of  the 
requisite  skill  in  the  preparation  and  presentation  of  cases  to 
the  Office,  and  the  making  of  such  amendments  should  not  be 
allowed  to  operate  to  the  prejudice  of  the  claims  of  applicants, 
if  made  in  due  and  reasonable  time  and  in  good  faith.  (C.  A. 
D.  C.     Oct.  4,  1899.) 

Alvey,  J.]     *Huletti.'.  Long,  89  0.  G.  1141. 


INTERFERENCES.  131 

8.  ^^llile  it  is  permissible  to  amend  an  application  after  the 
issue  of  a  patent  so  as  to  i)rovoke  an  interference  with  such 
patent  where  the  application  as  originally  filed  disclosed  the  in- 
vention, such  amendment  should  not  be  permitted  where  the 
invention  itself  is  sought  to  be  changed  by  such  amendment. 
(Nov.  13,  1899.) 
DuELL,  C]     Grinnell  v.  Buell,  89  0.  G.  1863. 

IV.  Appeal. 

(a)  In  General. 

1.  Even  in  the  absence  of  any  motion  by  a  party  to  an  inter- 
ference, the  OfRce  will  of  its  own  motion,  take  notice  of  the  limit 
set  by  it  Avithin  which  action  must  be  taken.  (Feb.  10,  1899.) 
Greeley,  A.  C]     Uebelacker  v.  Brill,  GG  MS.  Dec.  271. 

2.  A  party  is  deprived  of  his  right  of  appeal  b}'  the  expira- 
tion of  the  limit  set  by  the  Office,  and  it  requires  no  action  on 
the  part  of  his  opponent  to  make  that  limitation  effective.    Id. 

3.  The  Office  is  not  bound  by  the  strict  rules  of  practice  that 
obtain  in  the  courts,  and  the  Commissioner  has  authority  to  ex- 
tend the  limit  of  appeal  in  a  proper  case,  even  after  the  limit  of 
appeal  has  expired;  but  it  is  well  settled  practice  not  to  extend 
such  limit  except  upon  a  showing  of  good  and  sufficient  reasons. 
(July  26,  1899.) 

Greeley,  A.  C]     Ancora  v.  Keiper,  67  MS.  Dec.  317. 

4.  Where  it  was  clear  that  the  failure  to  pay  the  fee  and  thus 
perfect  the  appeal  before  the  limit  of  appeal  had  expired  was 
due  to  inadvertence,  accident  or  mistake,  and  the  delay  was  not 
due  to  any  intention  or  negligence  on  the  part  of  appellant,  the 
motion  to  extend  the  limit  of  aj^peal  was  granted.  Id. 

5.  Where  an  applicant  fails  to  make  a  claim  suggested  b}-  the 
examiner  for  the  purpose  of  interference  and  as  a  result  the 
examiner  rejects  any  claim  of  the  application  for  the  reason 
that  failure  to  make  the  claim  and  to  become  a  part}'  to  the  in- 
terference will  "  be  interpreted  as  ecjuivalent  to  a  concession," 
Held,  that  appellant's  remedy  is  by  appeal  to  the  Examiners-in- 
Chief  and  not  by  petition  to  the  Commissioner.  (Apr.  13, 
1897.) 

Duell,  C]     Ex  parte  Calm,  87  0.  (i.  1397. 


132  INTERFERENCES. 

IV.  Appeal. 

(ft)  No  Ap}:)eal  Lies. 

1.  Rule  124  provides  that  no  appeal  can  be  taken  from  the 
decision  of  the  examiner,  holding  that  a  party  has  a  right  to 
make  a  claim,  and  this  rule  applies  whether  tlie  question  is 
raised  by  amendment  under  rule  109  or  comes  up  under  some 
other  rule.      (Feb.  10,  1899.) 

Greeley,  A.  C]     Uebelacker  v.  Brill,  66  MS.  Dec.  271. 

2.  The  rule  prohibiting  an  appeal  from  a  favorable  decision 
on  patentability  applies,  whatever  reason  is  given  for  that  de- 
cision, since  it  is  well  settled  that  the  appeal  must  be  from  the 
decision  and  not  from  the  reasons  advanced  in  support  of  it. 
{Breidv.  Smith,  84  0.  G. .  809.)  The  rule  is  not  founded  on 
the  presuinption  that  no  mistake  will  ever  be  made  in  holding 
a  claim  patentable,  but  is  for  the  reason  that  it  is  essentially  an 
ex  parte  matter  in  which  no  person  other  than  the  applicant  can 
have  such  interest  as  to  entitle  him  to  be  heard.  It  is  the  well- 
settled  policy  of  the  Office  to  refuse  to  entertain  an  appeal  from 
such  a  decision.      (Jan.  6,  1899.) 

Greeley,  A.  C.]     Woodward  v.  Newton,  86  0.  G.  490. 

3.  There  being  no  direct  appeal  from  the  examiner's  decision 
affirming  patentability,  a  contestant  Avill  not  be  permitted  to 
obtain  indirectly  a  review  thereof  upon  appeal  by  merely  mis- 
naming the  action  and  calHng  it  a  petition.      (Manny  v.  Easley 

V.  Greenwood,  48  0.  G.  538,  cited.)  Id. 

4.  When  a  motion  to  dissolve  alleging  that  the  device  of  one 
of  the  parties  is  inoperative  was  denied  by  the  Primary  Exam- 
iner, no  right  of  appeal  existed  and  the  Examineri-in-Chief 
properly  dismissed  such  appeal.      (Dec.  15,  1898.) 

Greeley,  A.  C.]     Fowler  v.  Dodge,  86  0.  G.  1497. 

5.  A  party  will  not  be  permitted  after  the  interference  is  de- 
cided to  prevent  action  on  his  opponent's  application  or  the 
issue  of  his  patent  by  merely  filing  an  appeal  when  it  has  been 
decided  that  he  has  no  right  of  appeal.  Id. 

6.  Where  an  appeal  was  taken  to  the  Commissioner  from  the 
decision  of  the  examiner  denying  a  motion  to  dissolve  an  inter- 
ference on  questions  which  relate  to  the  merits  of  the  invention, 


INTERFERENCES.  ]  33 

Hdd,  that  as  under  tlic  rules  and  the  uniform  ]>ractice  of  the 
Office  the  Commissioner  has  decHncd  to  take  jurisdiction  of 
such  questions  either  by  appeal  or  i)etition,  the  appeal  should 
be  dismissed.  (Manny  v.  Easley  etal.,  48  O.  G.,  548  ;  Stewart 
V.  Ellis  et  ah.  49  0.  G.,  1988,  and  Edison  r.  Stanley,  57  0.  G., 
273,  cited.)  (Jan.  19,  1899.) 
DuELL,  A.  C]     Breul  r.  Smith,  86  0.  G.,  1685. 

7.  The  practice  of  the  Office  under  which  tlie  Commissioner 
declines  to  take  jurisdiction  of  questions  relating  to  the  merits 
brought  to  him  by  i^etition  or  appeal  from  the  decision  of  the 
Primary  Examiner  on  a  motion  to  dissolve  should  be  followed 
unless  there  should  appear  some  extraordinary  reason  for  de- 
parting therefrom.  Id. 

V.   Burden  of  Proof. 
(a)  In  General. 

1.  To  overcome  a  case  made  by  an  earlier  application  the 
same  weight  of  evidence  is  not  required  as  in  criminal  cases. 
It  is  only  necessary  that  the  burden  of  proof  should  be  sustained 
by  the  junior  applicant  by  a  preponderance  of  testimony.  (C. 
A.,  D.  C.     Jan.  8,  1899.) 

Shepard,  J.]     ^  Esty  v.  Newton,  86  O.  G.  799. 

2.  Upon  him  who  would  overcome  the  presumption  that  to 
the  person  who  has  first  reduced  to  practice  belongs  the  merit 
also  of  priority  of  conception,  the  burden  rests  of  doing  so  by 
satisfactory  evidence.      (C.  A.,  D.  C.     Feb.  8,  1899.) 
Morris,  J.]     *Bader  v.  Vajen,  87  0.  G.  1235. 

8.  A  reissue  applicant  is  entitled  to  the  date  of  his  original 
application  as  his  date  of  filing  in  determining  the  question  of 
burden  of  proof  under  Rule  116.      (Aug.  81,  1899.) 
Greeley,  A.  C]     Walsh  x.  Hallbauer,  88  0.  G.  2409. 

4.  A  reissue  can  be  granted  only  for  an  invention  clearly  dis- 
closed and  intended  to  be  claimed  in  the  original  patent,  and 
therefore  if  a  party  is  entitled  to  a  claim  by  reissue  it  follows 
that  the  original  application  clearly  disclosed  the  matter  covered 
by  it.  Id. 


134  INTERFERENCES. 

V.   Burden  of  Proof. 

(b)  When  one  Contestant  is  a  Patentee. 

1.  When  an  applicant  comes  into  the  Patent  Office  to  over- 
throw a  prior  patent,  he  assumes  the  position,  with  all  its  bur- 
dens, of  a  defendant  in  a  suit  who  sets  up  to  defeat  the  right  of 
a  plaintiff,  the  want  of  novelty  and  invention  covered  by  the 
patent  held  by  the  plaintiff,  or  the  fact  of  existence  of  priority 
of  invention  by  the  defendant  or  some  third  person  having  a 
right  to  the  invention  superior  to  that  claimed  by  the  plaintiff. 
In  such  case  the  patent  held  by  the  plaintiff  furnishing  irrima 
facie  evidence  that  the  patentee  is  the  first  inventor  of  the  device 
described  in  the  patent  and  of  its  novelty,  that  'prima  facie  effect 
can  only  be  overcome  and  defeated  by  clear  and  indubitable 
evidence.  In  Cantrell  r.  Wallich,  35  0.  G.  871  ;  117  U.  S. 
690,  the  Supreme  Court  of  the  United  States  in  speaking  of  the 
effect  of  a  patent  in  such  case  said:  The  burden  of  proof  is  upon 
the  defendant  to  establish  this  defense  ;  for  the  grant  of  letters 
patent  is  prima  fade  evidence  that  the  patentee  is  the  first  in- 
ventor of  the  device  described  in  the  letters  patent  and  of  its 
novelty.  Smith  v.  Goodyear  Dental  Vulcanite  Co.,  11  0.  G. 
246;  93  U.  S.  486;  Lehnbeuter  v.  Holthaus,  21  0.  G.  1783;  105 
U.  S.  94.  Xot  only  is  the  burden  of  proof  to  make  good  this 
defense  upon  the  party  setting  it  up,  but  it  has  been  held  that 
ever}^  reasonable  doubt  should  be  resolved  against  him.  Citing 
Coffin  V.  Ogden,  5  0.  G.  270;  18  Wall.  120,  124,  and  Washburn 
V.  Gould,  2  Story  122,  142.  (C.  A.,  D.  C.  Jan.  17,  f899.) 
Alvey,  J.]     =i<  Williams  v.  Ogle,  87  0.  G.  1958. 

2.  E. ,  the  senior  part}'  and  patentee,  filed  his  application 
January  28,  1896,  and  R.  filed  November  6,  1896.  To  over- 
come E.'s  case,  R.  alleged  conception  on  January  17,  1895,  and 
reduction  in  February  or  ^larch,  1895.  Hekl^  that  R.,  on 
whom  was  the  burden  of  proof  and  who  under  the  rules  is  re- 
quired to  prove  his  case  by  evidence  so  cogent  as  to  leave  no 
reasonable  doubt,  has  failed  to  discharge  the  onus  placed  upon 
him,  and  priority  is  therefore  awarded  to  E.  The  decision  of 
the  Commissioner  of  Patents,  Ruete  v.  Elwell,  65  MS.  Dec. 
256,  affirmed.     (C.  A.,  D.  C.     May  4,  1899.) 

Shepard,  J.]     *  Rente  v.  Elwell,  87  0.  G.  2119. 


INTERFERENCES.  135 

VI.   Declaration  of. 
(a)  III  General. 

1.  It  is  not  proper  to  include  several  claims  in  one  application 
under  one  issue,  since  they  cannot  all  mean  the  same  thing,  and 
therefore  confusion  as  to  the  meaning  of  the  issue  would  be 
likely  to  result  in  taking  testimony.  (Wolfenden  v.  Price,  83 
0.  G.  1801.)     (Jan.  16,  1899.) 

Greeley,  A.  C]     Sadtler  v.   Carmichael  v.   Smith,   86  0.   G. 

1498. 

2.  It  is  proper  to  include  two  applications  of  the  same  party 
under  one  issue  when  the  invention  in  controvery  is  disclosed 
and  claimed  in  both  cases.  Id. 

3.  Where  the  issue  of  the  interference  was  for  a  process  and 
the  examiner  included  under  that  issue  claims  for  an  article  of 
manufacture  which  were  not  made  by  one  of  the  parties,  Held, 
that  the  interference  was  improperly  declared  and  that  the 
article  claims  should  not  have  been  included  in  the  interference. 
(Feb.  5,  1899.) 

Greeley,  A.  C]     Calm  v.  Schweinitz  r.  Dolley  v.  Geisler,  86 
0.  G.   1633. 

4.  Where  the  claims  of  the  a))plications  were  rejected  and  the 
examiner  declared  the  interference,  he  in  effect  withdrew  the 
rejection  of  the  clain)s;  Init  it  is  l)ad  ])ractice  to  declare  an  inter- 
ference before  the  parties  have  been  notified  that  there  is  an 
interference  and  given  an  oj^portunity  to  remove  the  objections 
and  overcome  the  references.  /(/. 

5.  When  the  claim  of  one  party  includes  a  step  in  the  ])rocess 
not  included  in  the  issue  or  the  claim  of  the  other  party,  there 
is  no  interference  in  fact.      (Dec.  21,  1898.) 

Greeley,  A.  C]     Bullier  v.  Willson,  87  O.  G.  180. 

6.  AVhen  the  specification  clearly  and  fully  sets  forth  the 
advantages  of  using  an  alternating  instead  of  a  direct  current,  it 
cannot  be  held  that  when  tlic  limitation  to  the  use  of  an  alter- 
nating current  was  inserted  in  the  claim  it  was  intended  to  or 
does  in  fact  apply  to  the  use  of  any  current  broadly.  /(/. 

7.  In  the  consideration  of  an  interference  the  Office  is  no 
more  competent  than  the  courts  to  say  that  an  element  which 
an  ap])licant  has   placed   in  his  claims  is  an  innnaterial  one, 


186  INTERFERENCES. 

especially  when  in  framing  the  issue  tlie  Office  had  made  the 
element  a  part  thereof.      (Hammond  v.  Hart,  83  0.  G.  743,  and 
Wolfenden  v.  Price,  83  0.  G.  1801,  cited.)     (Mar.  2,  1899.) 
DuELL,  C]     Streat  v.  Freckleton,  87  0.  G.  695. 

8.  Where  there  is  but  a  single  issue  in  the  interference,  but 
the  interference  letter  states  that  said  issue  constitutes  claim  2 
of  H.'s  original  application,  and  also  embraces  the  substance 
of  claims  1  and  4,  respectively,  of  two  divisional  applications, 
Held,  that  under  the  present  practice  H.  should  be  notified 
that  these  claims  will  be  held  to  await  the  result  of  the  inter- 
ference, and  will  be  rejected  at  the  termination  of  the  interfer- 
ence if  priority  is  awarded  to  his  opponent.  If,  however,  they 
are  not  substantially  the  same  claims  and  such  claims  are  made 
by  his  opponent,  then  said  claims  should  be  placed  in  one  or 
more  different  interferences.  In  any  event  the  divisional  ap- 
plications are  not  properly  involved  in  this  interference.  (May 
12,  1899.) 
DuELL,  C]     Eastman  r.  Houston,  87  0.  G.  1781. 

VI.   Declaration  of. 

(/>)  Ajyplication  and  Patent. 

1.  If  it  is  clear  that  a  patentee's  claim  is  limited  to  a  specific 
construction  and  the  later  applicant  chooses  to  claim  the  same 
invention  generically  and  can  establish  a  prima  fade  right  to  the 
claim  under  the  rules,  such  generic  claim  may  be  allowed  with- 
out an  interference.  So,  too,  if  the  later  applicant  limits  his 
claim  to  a  species  not  claimed  by  the  patentee.  (Feb.  1,  1899.) 
Greeley,  A.  C]     Edison  v.  White,  66  MS.  Dec.  240. 

2.  An  applicant  cannot  be  permitted,  by  merely  wording  his 
claim  differently  from  that  of  a  patent  granted  before  the  filing 
of  his  application,  to  secure  a  patent  for  the  same  invention 
unless  and  until  he  has  established  his  right  thereto  in  an  inter- 
ference proceeding.  Id. 

8.  B's  application  was  not  filed  until  after  R's  patent  had 
been  granted,  and  he  had  been  notified  that  he  (B)  was  in- 
fringing said  patent.  R  had  also  manufactured  the  device  and 
placed  it  on  the  market  a  year  before  B  commenced  to  manu- 
facture it.     Held,  that  in  order  to  prevail,   B  must  prove  his 


INTERFERENCES.  137 

€ase  beyond  a  rcasonahle  (loul)t,  and  not  merely  ])y  a  i)repon- 

derance  of  evidence.      (Mar.  25,  1899. ) 

Greeley,  A.  C]     Bragger  i'.  Rhind,  66  MS.  Dec.  409. 

4.  If  the  evidence  in  an  interference  between  an  application 
and  a  patent  is  susceptible  of  two  interpretations,  one  sustain- 
ing and  one  destroying  the  patent,  the  one  sustaining  it  must 
be  accepted.  Id- 

5.  Where  an  interference  was  found  to  exist  Ijetween  an  appli- 
cation and  a  patent,  and  upon  request  of  applicant  the  interfer- 
ence was  innnediately  declared  without  waiting  to  determine  the 
question  of  the  patentability  of  the  claims  of  his  a^jplication 
which  did  not  interfere.  Held,  that  this  is  proper  i)ractice, 
since  nothing  is  to  be  gained  by  delaying  the  declaration  in 
cases  of  this  kind,  and  it  is  to  the  advantage  of  all  parties,  and 
is  the  purpose  of  the  rules  to  have  interferences  settled  as  soon 
as  possible.      (Aug.  22,  1899.) 

Greeley,  A.  C]     Shaffer  v.  Dolan,  67  MS.  Dec.  392. 

6.  That  portion  of  rule  96  relating  to  the  putting  of  an  ap- 
plication in  condition  for  allowance,  applies  as  well  where  one 
of  the  parties  to  an  interference  is  a  patentee,  and  an  interfer- 
ence need  not  be  delayed  because  of  the  failure  of  the  applicant 
to  put  his  case  in  condition  for  allowance.  Id. 

VI.   Declaration  of. 

(c)  Claims;  Subjects- Matter  must  Conflict. 
A  condition  precedent  to  the  declaration  of  an  interference 
under  the  present  practice  is,  that  interfering  claims  of  one  in- 
terfering party  must  be  read  upon  the  structure  of  the  other 
party,  and  where  this  condition  is  absent  no  interference  should 
be  declared.  (Jan.  6,  1899.) 
Greeley,  A.  C]     Crocker  v.  Allderdice,  66  MS.  Dec.  140. 

VI.  Declaration  of. 

(fZ)  Suggesting  Claims. 
The  examiner  having  held  that  G's  original  disclosure  sup- 
ported the  claim  of  the  issue  which  was  H's  claim  and  had 
been  suggested  to  G,  and  that  G  had  a  right  to  make  the  claim, 
and  it  appearing  that  H  substantially  admitted  that  there  was 
an  interference  if  G  had  a  right  to  make  the  claim.     Held,  that 


138  INTERFERENCES. 

upon  appeal  from  the  examiner's  denial  of  H's  motion  to  dis- 
solve on  the  ground  of  no  interference  in  fact,  and  irregularity 
in  declaring  the  interference,  the  examiner's  decision  should  be 
affirmed.      (May  16,  1899.) 
DuELL,  C]     Gathman  ?'.  Hurst,  67  MS.  Dec.  61. 
VI.   Declaration  of. 

(e)   Genus  and  Species. 

1.  A  generic  and  specific  claim  do  not  interfere  even  when 
based  on  the  tame  species,  and  valid  patents  may  issue  to  dif- 
ferent inventors — to  one  for  the  specific  claim,  to  the  other  for 
the  generic  claim — and  the  law  does  not  require  that  before  the 
patents  issue  it  should  be  determined  in  the  Patent  Office  that 
one  is  the  first  inventor  of  the  species  and  the  other  the  first 
inventor  of  the  genus.  (Reed  r.  Landman,  55  0.  G.  1275, 
overruled.)      (May  6,  1899.) 

DuELL,  C]     Williams  v.  Perl,  87  0.  G.  1607. 

2.  The  case  of  Miller  v.  Eagle  Manufacturing  Co.  (66  0.  G. 
845)  does  not  hold  that  a  patent  cannot  issue  to  A  with  a  generic 
claim  and  to  B  with  a  specific  claim,  both  based  on  the  disclo- 
sure of  the  same  species.  Id. 

3.  The  presumption  is  that  the  one  to  make  the  specific  claim 
is  the  first  inventor  of  the  species  and  that  the  one  who  makes 
the  generic  claim  is  the  first  inventor  of  the  genus,  and  this  pre- 
sumption is  strengthened,  as  in  the  present  case,  when  neither 
applicant  will  make  both  generic  and  specific  claims  upon  the 
suggestion  of  the  Office.  Id. 

4.  It  does  not  follow  from  the  fact  that  two  inventors  finally 
reach  the  same  species  that  both  of  them  first  conceived  or  em- 
bodied the  invention  in  the  form  of  that  species  shown  by  both. 
Either  or  both  of  them  might  have  independently  conceived  of 
the  genus  in  a  different  specific  form.  M. 

5.  Notwithstanding  the  fact  that  two  inventors  filing  inde- 
pendent applications  disclose  the  same  species,  it  does  not  follow 
that  the  first  inventor  of  the  species  shown  by  both  was  the  first 
inventor  of  the  genus.  The  one  earlier  in  the  field  may  have 
reached  the  sj^ecies  by  a  process  of  evolution.  The  one  later  in 
the  field  may  have  conceived  and  disclosed  the  species  shown  at 
the  very  outset  of  his  creative  act.  Id. 


INTERFERENCES.  139 

VI.  Declaration  of. 

(/)   Claims  Identical  in  Scope. 

1.  Both  parties  disclose  a  luln-icator  of  tlie  type  known  as 
"balanced  hydrostatic  sight-feed  lubricators."  They  disclose 
suitable  cylinder  and  equalizing-pipe  connections.  In  W's  claim 
in  interference  these  connections  are  specified,  -while  in  E's' 
they  are  not.  Both  parties  disclose  a  valve  for  controlling  the 
by-passage  automatically,  and  it  is  recited  as  an  element  in  the 
respective  claims  of  the  parties.  W's  claim  recites  that  this 
valve  is  automatically  regulated  "by  variations  of  pressure 
within  the  duct,"  such  a  statement  not  being  in  E's'  claim. 
Held,  that  under  the  practice  of  the  office  the  limitations  found 
in  one  claim  and  not  in  the  other  cannot  be  construed  as  non- 
essential, and  the  interference  was  improperly  declared.  (Sept. 
21,  1899.) 

DuELL,  C]     Essex  v.  Woods,  89  0.  G.  353. 

2.  Held,  further,  that  had  the  examiner  beheved  that  E's 
device  was  inoperative  without  the  use  of  suitable  cylinder  and 
equalizing- pipe  connections  and  without  the  valve  being  auto- 
matically operated  by  variations  of  pressure  within  the  duct, 
and  called  upon  E  to  amend  his  claim  accordingly,  there  would 
have  been  no  necessity  for  placing  a  construction  upon  E's 
claim  by  reading  into  it  certain  limitations.  /(/. 

3.  Held,  further,  that  had  E  refused  to  comply  with  the 
examiner's  suggestion,  the  examiner  would  have  ])een  justified 
in  rejecting  E's  claim  as  being  for  an  inoperative  device  and  as 
unpatentable  over  the  W  invention.  Id. 

4.  An  interference  is  not  sufficiently  clear  and  definite;  which 
requires  that  certain  limitations  in  the  claims  of  one  party 
should  be  held  to  be  immaterial,  and  that  the  other  limitations 
should  be  read  into  the  claims  of  either  one  or  the  other  party 
to  the  proposed  interference  in  order  to  make  them  the  issue  of 
the  interference.      (Wolfenden  r.  Price,  83  0.  G.  1801,  cited.) 

Id. 

VII.  Dissolution. 

(a)  In  General. 
1.   It  would  be  contrary  to  equity  and  good  practice  to  dis- 
solve an  interference  after  the  parties  had  both  taken  testimony, 


140  INTERFERENCES. 

and  proceeded  to  trial,  if  the  dissolution  would  be  followed 
immediately  by  a  redeclaration  on  an  issue  founded  upon  the 
same  structure  ;  but  where  only  one  of  the  parties  had  taken 
testimony,  and  under  the  present  practice  there  is  no  interfer- 
ence in  fact,  and  the  interference  should  not  have  been  declared 
in  its  present  form.  Held^  that  dissolution  was  proper.  (Jan. 
6,  1899.) 
Greeley,  A.  C]     Crockery.  Allderdice,  66  MS.,  Dec.  140. 

2.  When  under  the  present  practice  the  interference  was  im- 
properly declared  by  reason  of  the  fact  that  the  claims  of  the 
parties  are  not  of  the  same  scope,  but  it  appears  that  the  party 
with  the  specific  claim  can  make  and  intends  to  make  the  broad 
claim,  although  he  has  not  actually  presented  such  claim  by 
amendment,  Held,  that  the  interference  should  not  be  dissolved, 
since  a  dissolution  would  merely  result  in  a  redeclaration  on  the 
same  issue.      (Dec.  1,  1898.) 

Greeley,  A,  C]     Morss  v.  Henkle,  86  0.  G.  183. 

3.  It  is  irregular  to  include  several  claims  of  one  party  under 
one  issue  ;  but  when  judgment  has  been  rendered  on  the  record 
and  no  testimony  is  to  be  taken,  it  is  not  such  irregularity  as  to 
preclude  a  proper  decision  on  priority,  and  is  therefore  not  a 
good  ground  for  dissolution.  Id. 

4.  Motion  for  dissolution  cannot  be  made  in  the  first  instance 
before  the  Primary  Examiner,  although  the  interference  is  be- 
fore him  for  the  consideration  of  another  motion,  but  it  must 
be  made  before  and  transmitted  by  the  Examiner  of  Interfer- 
ences before  the  Primary  Examiner  can  take  jurisdiction  of  it. 
(Dec.  8,  1898.) 

Greeley,  A.  C]     Howard  v.  Hey,  86  0.  G.  184. 

5.  Since  the  decision  in  Hammond  v.  Hart  (83  0.  G.  743)  it 
has  been  the  practice  of  the  Ofhce  to  dissolve  an  interference 
where  each  party  has  not  made  the  claim  of  the  other,  if  no 
testimony  has  been  taken  and  the  parties  will  not  be  injured  by 
the  dissolution.     (Feb.  5.  1899.) 

Greeley,  A.  C]     Calm  v.  Schweinitz  v.  Dolly  v.  Geisler,  86  0. 
G.  1633. 

6.  Certain  affidavits  filed  in  the  case  on  motion  to   dissolve 


INTERFERENCES.  141 

should  not  be  considered,  as  they  were  not  entitled  in  the  cause, 
(Goldstein  r.  Whelan,  69  0.  G.  124  ;)  but  the  memorandum 
filed  on  behalf  of  one  of  the  parties  referring  to  certain  ))ubliea- 
tions  to  show  that  the  invention  as  described  by  another  of  the 
parties  is  inoperative,  should  be  considered  to  the  extent  of  ex- 
amining the  pu])lications  referred  to  in  that  paper  to  ascertain 
whether  they  show  that  the  process  is  inoperative.  Id. 

7.  The  allegation  that  the  testimony  shows  that  joint  a])pli- 
cants  who  are  parties  to  the  interference  are  not  joint  inventors 
is  not  a  proper  ground  for  a  motion  to  dissolve  or  for  a  suspen- 
sion of  the  interference.      (Dec.  16,  1898.) 

Greeley,  A.  C]     Shiel  v.  Lawrence  et  ai,  87  O.  G.  180. 

8.  To  pass  on  the  question  of  joint  invention  would  re(iuire  as 
full  consideration  of  the  testimony  as  would  the  question  of 
originality,  and  therefore  both  questions  should  be  decided  at 
one  time.  Id. 

9.  The  question  as  to  wliether  L  and  K  are  original  inventors 
is  just  as  important  as  is  the  question  whether  they  are  joint 
inventors,  and  therefore  the  question  of  joint  invention  will  not 
be  given  the  preference  at  the  mere  option  of  their  opponent.  Id. 

10.  The  Commissioner  of  Patents  is  vested  with  power  to  dis- 
solve an  interference  on  his  own  motion  whenever  he  considers 
that  justice  and  equity  demand  that  it  should  be  done.  (Ben- 
der V.  Hoffmann,  85  0.  G.  1737,  and  Bechman  r.  Wood,  68  0. 
G.  2087,  cited.)     (Apr.  13,  1899.) 

DuELL,  C]      Ex  parte  Ca\ir\,  87  0.  G.  1397. 

11.  Where  a  motion  was  made  to  dissolve  an  interference  on 
the  ground  of  (1)  no  interference  in  fact,  (2)  no  right  of  one  of 
the  parties  to  make  a  claim,  and  (3)  irregularity  in  declaring 
the  interference,  and  the  examiner  in  his  decision  treated  the 
grounds  as  raising  only  the  question  of  the  right  of  one  of  the 
parties  to  make  the  claim  and  decided  that  there  was  such  right 
and  refused  to  fix  a  limit  of  ai)peal.  Held,  that  the  examiner's 
refusal  to  set  a  limit  of  appeal  raises  a  question  which  if  carried 
to  its  logical  conclusion  would  nullify  rule  124  and  make  the 
primarj'^  examiner  the  sole  tril)unal  to  determine  whether  or  not 
an  interference  should  continue.      (July  12,  1899.) 

DuELL,  C]     Silverman  v.  Hendrickson,  88  0.  G.  1703. 


142  INTERFERENCES. 

12.  Where  motion  is  made  to  dissolve  an  interference  based 
upon  various  grounds,  some  of  wliich  are  appealable  to  the 
Commissioner  under  rule  124,  it  cannot  be  successfully  main- 
tained that  the  primary  examiner  by  grouping  the  appealable 
grounds  with  a  ground  which  is  not  appealable  may  prevent 
the  Commissioner  from  reviewing  his  action.  It  is  not  within 
the  power  of  a  primary  examiner  by  such  ingenious  action  to 
nullify  an  office  rule.  Id. 

13.  As  both  parties  consented  to  and  did  present  the  question 
of  merits  for  decision,  i/e/c/,  that  it  is  unnecessary  to  remand  the 
case  to  the  primary  examiner  for  the  purpose  of  setting  a  limit 
of  appeal,  and  the  appeal  disposed  of.  Id. 

14.  It  is  the  almost  uniform  practice  of  the  Office  not  to 
transmit  motions  to  dissolve  an  interference  until  after  the  pre- 
liminary statements  are  filed  and  approved.  In  the  exceptional 
cases  where  such  motions  have  been  transmitted  prior  to  the 
approval  of  the  statements,  it  has  been  for  the  reason  that  the 
hearing  could  be  had  "under  such  circumstances  as  would 
make  it  just  to  hold  parties  to  the  result  of  a  contest  as  res  ad- 
judicata.''^  (Laurent-Cely  t'.  Payen,  51  0.  G.  621.)  (Dec.  7, 
1899.) 

DuELL,  C]      King  &  Badendreier  v.  Libby,  89  0.  G.  2653. 

15.  A  motion  to  dissolve  an  interference  on  the  ground  that 
there  has  been  such  irregularity  in  declaring  the  interference  as 
would  preclude  the  proper  determination  of  the  question  of  pri- 
ority and  that  no  interference  in  fact  exists  should  not  be  trans- 
mitted to  the  primary  examiner  until  the  preliminary  statements 
have  been  approved.  Id. 

16.  The  questions  raised  b}'  such  a  motion  cannot  be  so  cor- 
rectly determined  without  an  inspection  of  the  opponent's 
specification  and  drawings  as  it  can  with  it.  It  cannot  at  the 
present  time  be  so  heard  and  determined  that  the  parties  could 
be  justly  held  to  be  bound  by  it  in  subsequent  proceedings.   Id. 

17.  Moving  to  dissolve  an  interference  upon  any  of  the 
grounds  stated  in  rule  122  before  the  preliminary  statements 
are  opened  and  approved  is  a  practice  not  to  be  encouraged.   Id. 

18.  Even  though  a  decision  should  be  res  adjudlcata  between 
the  parties  upon  one  or  two  questions  presented  by  a  motion  to 


INTERFERENCES.  148 

dissolve  before  the  preliminary  statements  are  opened,  the  other 
grounds  upon  which  motions  to  dissolve  might  be  made  as  a 
matter  of  right  within  twenty  days  after  the  statements  are 
opened  and  approved  could  still  be  considered,  and  the  condi- 
tion of  dis])osing  of  motions  to  dissolve  by  piecemeal  would  re- 
sult, thus  entaiHng  an  unnecessary  burden  upon  parties  to  an 
interference  and  increasing  the  expense  of  proceedings  and 
unnecessarily  prolonging  them.  Id. 

VII.  Dissolution. 

(/>)  Rule  122. 

1.  A  petition  praying  tliat  the  examiner  "*  *  *  be  advised 
that  from  every  motion  based  upon  the  ground  of  irregularity, 
wherein  it  is  contended  by  the  moving  part}^  that  the  ground  of 
irregularity  involves  something  more  than  the  question  of  patent- 
able invention  of  the  issue,  a  limit  of  appeal  should  be  fixed  to 
enable  such  moving  party  to  appeal;  "  cannot  be  granted,  since 
the  Office  must,  without  regard  to  the  views  of  the  parties, 
determine  for  itself  whether  the  grounds  urged  as  showing  what 
the  moving  party  calls  irregularity  do  in  fact  relate  to  the  merits. 
In  each  case  it  is  not  a  question  as  to  the  opinion  of  the  parties 
or  their  contentions,  but  it  is  one  of  fact.  If  the  reasons  stated 
as  showing  irregularity  really  involve  the  question  of  patent- 
ability or  the  applicant's  right  to  make  the  claim,  it  involves 
the  merits,  and  a  party  cannot  transform  it  into  another  ques- 
tion by  merely  calling  it  irregularity.  The  four  grounds  for 
dissolution  set  forth  in  rule  122 — namely,  interference  in  fact, 
irregularity,  i)atentability,  and  right  to  make  the  claim — have 
distinct  and  independent  meanings,  which  should  not  be  con- 
fused by  parties  bringing  motions  under  that  rule.  Each  ground 
which  it  is  desired  to  urge  should  be  separatedly  alleged  and 
should  be  given  the  proper  title  specified  in  the  rule.  (Jan.  6, 
1899. ) 

Greeley,  A.  C]     Woodward  r.  Newton,  86  0.  G.  490. 

2.  Interference  in  fact  refers  to  the  question  of  conllict  in 
subject-matter  claimed,  as  set  forth  in  Hammond  r.  Hart,  (S3 
0.  G.  743),  and  irregularity  means  some  vital  formal  defect 
which  will  preclude  a  proper  decision  on  priority,  although 
there  may  be  a  conflict  in  subject-matter,  such  as  indefiniteness 


144  INTERFERENCES. 

or  uncertainty  in  the  wording  of  the  issue.  These  questions 
relate  strictly  to  the  conduct  of  the  interference  proceedings 
without  involving  the  merits  of  the  invention  or  either  party's 
right  to  a  patent,  and  are  therefore  essentially  inter-  partes  ques- 
tions which  are  appealable  directly  to  the  Commissioner.    Id. 

3.  The  question  of  patentability  and  the  right  of  an  appli- 
cant to  make  the  claim  clearly  relate  to  the  merits,  and  when 
appealable  at  all  are  ex  parte  questions  between  the  applicant 
whose  claim  is  affected  and  the  Office.  (Painter  v.  Hall,  83 
0.  G.  1803.)     As  stated  in  Zeidler  v.  Leech,  (54  0.  G.  503:) 

Questions  involving  the  "  merits  of  an  invention  "  are  questions  concerning  tlie  meri- 
torious or  unmeritorious  attitude  of  an  alleged  invention  to  the  antecedent  rights  of  the 
public;  or,  in  ottier  words,  questions  other  than  questions  of  "form"  arising  between 
the  applicant  and  the  Office.  *  *  *  If  they  were  not  ex  parte— that  is  to  say,  if  the  ques- 
tions which  go  to  the  Examiners-in-Chief  in  the  first  instance  under  rule  124  were  not 
always  and  necessarily  ex  parte  questions — the  rule  which  denies  to  all  but  one  of  the 
parties  the  right  to  be  heard  would  be  formulated  injustice  and  nothing  else.  Id. 

4.  The  question  of  patentability  of  course  relates  generally  to 
the  question  as  to  whether  there  is  a  bar  to  the  grant  of  a  patent 
containing  the  claim  in  controversy,  whereas  the  c^uestion  of  the 
right  of  an  applicant  to  make  the  claim  involves  the  question 
whether  that  particular  applicant  has  a  right  to  claim  that 
invention  aside  from  any  independent  or  general  bar  to  the 
grant  of  a  patent  covering  it — such,  for  instance,  as  new  matter 
introduced  after  the  case  is  on  file.  Id. 

5.  When  two  applications  of  one  party  are  included  under 
one  issue,  the  allegation  that  the  applicant  has  no  right  to  make 
the  claim  in  one  of  those  cases,  although  it  is  admitted  that  he 
has  such  right  in  the  other  case,  is  a  proper  ground  for  a  motion 
to  dissolve.      (Jan.  16,  1899.) 

Greeley,  A.  C]     Sadtler  v.   Carmichael  v.  Smith,   86   0.  G. 
1498. 

6.  It  is  to  be  presumed  that  claims  which  have  not  been 
specifically  rejected  are  regarded  as  allowable.  Even  if  claims 
have  been  rejected  their  inclusion  in  an  interference  is  in  effect 
a  waiver  of  that  rejection.  The  failure  of  the  examiner  to  state 
that  the  claims  included  are  allowable  is  therefore  no  good 
ground  for  a  dissolution  of  an  interference.  Id. 

7.  Whether  or  not  an  applicant's  device  will  operate  in  the 
manner  set  forth  by  him,  his  description  of  his  method  and  his 


I STK  n  FERENCES.  1  4  5 

claim  to  it  must  be  accepted  in  so  far  as  tlic  (nu  stion  of  inter- 
ference in  fact  is  concerned.  A  (daini  cannot  be  construed  to 
mean  something  different  from  that  intende(l  ami  clearly  indi- 
cated by  the  terms  employed.  hi. 

6.  When  the  claim  of  a  party  covers  a  method  whicli  includes 
a  step  not  claimed  or  disclosed  ])y  the  other  ])arties,  there  is  no 
interference  in  fact,  whether  or  not  he  has  the  right  to  claim 
that  method  himself.  Id. 

VII.     DlSSOHTION, 

(r)  Time  AUoicahlc  fur  Filing  Motions. 
After  judgment  has  been  rendered  on  the  record  under  rule 
114,  a  motion  for  dissolution  may  be  made  at  any  time  within 
the  limit  of  appeal   from  such  judgment.     This  includes  not 
merely  the  limit  of  appeal  first  set,  but  any  extension  thereof 
granted  with  the  approval  of  the  Oflfice.      (Law  r.  ^\'oolf,  55 
0.  G.  1527.)     (Dec.   1,  1898.) 
Greeley,  A.  C]     Morss  v.  Henkle,  86  0.  G.  183. 
VII.   Dissolution. 

(d)  Statutory  Bars. 

1.  The  question  of  public  use  will  not  be  inquired  into  dur- 
ing the  progress  of  an  interference.  The  fact  that  it  is  alleged 
to  be  shown  by  the  statements  of  the  parties  in  interest  in 
another  proceeding  in  which  they  were  involved  is  no  ground 
for  making  this  case  an  exception  to  the  rule.  (Dec.  8,  1898.) 
Greeley,  A.  C]     Howard  v.  Hey,  86  0.  G.  184. 

2.  Where  a  motion  was  made  to  dissolve  an  interference  on 
the  ground  that  "the  invention  disclosed  in  the  issue  of  said 
interference  is  not  patentable  to  Leonard  Paget  or  his  assignees, 
the  Reliance  Lamp  Electric  Company,  by  virtue  of  concessions 
made  in  the  testimony  taken  in  l)ehalf  of  said  Leonard  Paget, 
which  concessions  allege  that  the  subject-matter  of  the  issue 
embraces  no  invention  over  the  subject-matter  disclosed  in  a 
prior  i)atent.  No.  618,993,  granted  to  said  Leonard  Paget  on  the 
7th  day  of  February,  1899,"  Held,  that  the  motion  being  l)ased 
upon  grounds  arising  out  of  testimony  taken  on  the  question  of 
priority,  it  should  not  under  the  settled  practice  of  the  Oflice  be 
transmitted  to  the  primary  examiner.      (Cook  v.  Leach,  42  MS. 

10 


146  INTERFERENCES. 

Dec.  370;  Potter  et  al.  v.  Soden,  47  MS.   Dec.    119;  Thomson 
et  al.  V.  Hisley,  m  0.  G.  1596,  cited.)      (Oct.  30,  1899.) 
DuELL,  C]     Paget,  v.  Bugg,  89  0.  G.  1342. 

3.  Held^  further,  that  the  testimony  on  which  the  motion  is 
based  is  such  testimony  as  should  be  considered  on  the  question 
of  priority,  and  if  the  examiner  of  interferences  or  the  ex- 
aminers-in-chief are  of  the  opinion  that  it  estabhshps  a  statutory 
bar  to  the  grant  of  a  patent,  rule  127  provides  relief  for  the 
appellant  in  that  these  tribunals  may  call  the  (Commissioner's 
attention  to  the  statutory  bar.  Id. 

VII.  Dissolution. 

(e)    Transmittal  of  Motion  to  Primary  Examiner. 

1.  It  is  well  settled  that  when  a  motion  for  dissolution  is  trans- 
mitted to  the  primary  examiner  he  does  not  have  jurisdiction  of 
the  interference  for  all  purposes,  but  merely  to  decide  the  par- 
ticular motion  which  has  been  transmitted  to  him.  (Dec.  8, 
1898.) 

Greeley,  A.  C]     Howard  v.  Hey,  86  0.  G.  184. 

2.  A  motion  to  dissolve  made  after  testimony  has  been  taken 
should  not  be  transmitted  to  the  primary  examiner  when  no 
excuse  is  given  for  the  delay  except  in  so  far  as  it  is  based  upon 
the  testimony.  Such  motions  cannot  properly  be  based  upon 
the  testimony.     (Dec.  16,  1898.) 

Greeley,  A.  C]     Shiels  v.  Lawrence,  et  al,  87  0.  G.  180. 

VIII.  Effect  of  Patent  Office  Decisions  in  the  Courts. 

1.  There  is  a  great  difference  between  inoperativeness  and 
imperfection.  It  is  well  known  that  many  invention  were  ex- 
tremely crude  in  their  inception,  and  it  is  not  always  easy  to 
recognize  the  original  conception  in  the  perfect  device.  (C.  A. 
D.  C,  Apr.  4,  1899.) 

Morris,  J.]     *  Fowler  r.  Dodge,  87  0.  G.  895. 

2.  As  it  is  not  usual  for  courts  to  disturb  the  conclusions  of 
the  Patent  Office  on  such  a  question  as  the  operativeness  of  a 
device  as  shown  and  described  by  an  application  for  patent 
without  very  cogent  proof  of  error,  and  there  being  no  such 
proof  in  this  case,  Held,  that  the  decision  of  the  Patent  Office 


INTERFERENCES.  147 

that  the  D  ai)|)]icati()n  describes  an  operative  device  should  he 
affirmed.  Id. 

IX.  Ex  Parte  Proceedings. 

1.  ^^'hether  the  claims  made  by  the  defeated  party  to  an  in- 
terference, and  read  upon  the  disclosure  made  in  his  application 
are  or  are  not  met  by  the  disclosure  made  by  the  successful 
party,  is  a  question  to  be  determined  ex  parte  and  the  practice 
approved  in  ex  parte  Guilbert,  85  0.  G.  454  ;  Sand.  Pat.  Dig. 
1898,  76,  94,  should  be  followed.  (Feb.  23,  1899.) 
Greeley,  A.  C]     Richards  v.  Nickerson,  66  IMS.  Dec.  812. 

2.  The  question  of  patentability  and  the  right  of  an  appli- 
cant to  make  the  claim  clearly  relate  to  the  merits,  and  when 
appealable  at  all,  are  ex  parte  questions  between  the  applicant 
Avhose  claim  is  affected  and  the  Office.  (Painter  v.  Hall,  83  0. 
G.  1803.      (Jan.  6,  1899.) 

Greeley,  A.  C]     Woodward  r.  Newton,  86  0.  G.  490. 

X.  Issue. 

1.  For  the  purposes  of  the  interference,  the  issue  should  be 
construed,  whenever  by  reason  of  material  differences  found  to 
exist  between  the  inventions  disclosed  in  the  applications  of  the 
parties  it  becomes  necessary  to  construe  the  issue,  with  reference 
rather  to  the  disclosure  made  in  the  application  of  the  senior 
party  than  that  of  the  junior  party,  and  where  priority  is 
awarded  to  the  senior  party,  the  effect  of  such  construction  is 
to  make  his  application  as  to  the  cJaim  of  the  issue  as  read  upon 
the  disclosure  made  by  him,  a  part  of  the  prior  art  so  far  as  the 
junior  party  is  concerned — to  make  it,  in  short,  a  reference 
which  the  junior  party  must  avoid  in  drawing  his  claims. 
(Feb.  23,  1899.) 

Greeley,  A.  C]     Richards  v.  Nickerson,  66  MS.  Dec.  312. 

2.  The  issue  of  an  interference  is  to  be  strictl}' construed,  and 
where  an  applicant  copies  the  claims  of  a  patent  for  the  pur- 
pose of   an  interference,    the  issue  must  be  construed  in  the 
light  of  the  specification  of  the  patent.     (June  24,  1899.) 
DuELL,  C]     Thomas  v.  Chapman,  67  MS.  Dec.  223. 

3.  Where  one  of  the  parties  to  an  interference  who  is  an 


148  INTEKFERENCES. 

applicant  had  l)efore  liim  when  he  prepared  his  apphcation  the 
patent  of  his  opponent  and  adopted  the  claims  of  said  opponent 
for  the  apparent  })nrpose  of  an  interference,  Held,  that  the  ap- 
plicant is  not  entitled  to  demand  a  construction  of  the  claim  of 
the  patentee  which  woidd  render  it  invalid  by  reason  of  that 
which  he  himself  had  accomplished  if  it  can  be  upheld  by  any 
other  reasonable  interpretation  not  necessarily  inconsistent  with 
the  statement  of  the  patentee.  (C.  A.  D.  C.  May  4,  1899.) 
Shepard,  J.]     *  Rente  V.  Elwell,  87  0.  G.  2119. 

4.  Neither  the  rules  nor  the  practice  of  this  Office  provide 
for  raising  and  testino;  the  question  as  to  whether  an  interfer- 
ence issue  is  anticipated  l)y  prior  patents  in  the  manner  at- 
tempted in  this  case.      (June  20,  1899.) 

DuELL,  C]     Huber  v.  Aiken,  88  0.  G.  1525. 

5.  To  permit  a  party  to  an  interference  to  take  up  the  ques- 
tion of  anticipation  of  the  issue  by  prior  patents  and  call  experts 
to  testify  at  length  on  such  matter  would  be  in  effect  to  suspend 
the  interference  proceeding  and  is  unwarranted  by  the  rules. 

Id. 

6.  When  a  party  to  an  interference  is  of  the  opinion  that  the 
issue  is  anticipated  by  the  prior  art,  he  should  proceed  to  raise 
this  question,  as  provided  b}-  rule  122.  Id. 

7.  Mere  similarity  in  the  wording  of  claims  does  not  show 
that  there  is  an  interference  in  fact  unless  those  words  construed 
in  the  light  of  the  disclosures  made  by  the  parties  mean  the 
same  thing.     (Oct.  10,  1899..) 

DuELL,  C]      Edgecomlje  v.  Eastman  v.  Houston,  89  0.  G.  707. 

8.  Where  the  claim  of  one  party,  when  read  in  connection 
with  his  disclosure  and  the  terms  employed  are  given  their 
ordinary  and  intended  meaning,  covers  features  not  disclosed  by 
the  other  party.  Held,  that  tliere  is  no  interference  in  fact.     Id. 

9.  Where  a  claim  is  held  allowable  on  appeal  on  the  ground 
that  it  contains  a  certain  limitation  as  distinguishing  it  from  the 
prior  art,  Held,  that  the  issue  in  an  interference  subsequently 
based  upon  that  claim  cannot  l)e  construed  as  not  including 
that  limitation.  Id. 

10.  Where  both  parties  are  applicants,  an  issue  should  not  be 
formulated  which  includes  features  not  disclosed  bv  one  of  the 


INTKUFKKKNCKS.  140 

parties  merely  because  in  the  cxaiuiiicr's  ojiiiiion  (lie  devices 
are  not  ])atentably  diflferent;  l)nt  if  there  is  a  common  patent- 
able invention  that  invention  alone  should  be  made  the  issue  if 
the  parties  desire  to  and  do  in  fact  make  claim  to  it.  Id. 

XI.  Ji'DOMEXT  ON  Tin-:  Record. 

^^'here  })riority  was  awarded  to  the  senior  party  to  an  inter- 
ference by  the  examiner  of  interferences  and  the  junior  party 
took  an  appeal  on  the  uround  that  the  application  of  the  senior 
party  did  not  disclose  the  invention  of  the  issue,  IlchJ,  that  the 
senior  party's  original  ai)])lication  did  not  disclose  the  invention 
of  the  issue,  and  thai  he  is  not  entitled  to  an  award  of  priority 
based  upon  tliat  ai)plication,  which  is  the  only  evidence  of  his 
claimed  invention,  and  the  decision  of  the  examiners-in-chief 
in  awarding  priority  to  such  party  affirmed.  (Nov.  13,  1899.) 
DuELL,  C]      Grinnell  r.  Buell,  89  0.  G.  1863. 

XII.  Motions  Generally. 

1.  Where  W  made  a  motion  that  certain  additions  be  made  to 
the  certified  copies  of  the  parts  of  his  application  involved  in  an 
interference,  which  motion  was  regularly  presented  to  the  ex- 
aminer and  granted,  and  subsequently  H,  the  other  party,  ap- 
pealed from  the  examiner's  decision  granting  the  motion,  while 
in  the  meantime  the  examiner  had  requested  the  suspension  of 
the  interference  for  the  purpose  of  adding  a  new  party  thereto 
under  rule  129,  Held,  that,  inasmuch  as  the  whole  (question 
raised  by  the  appeal  is  the  right  of  W  to  make  the  claim  of  the 
interference  issue  based  upon  the  additions  allowed  by  the  ex- 
aminer, it  is  unnecessar}^  to  pass  upon  it  at  this  time,  since  if 
the  new  party  is  added  and  the  interference  redeclared,  any  of 
the  parties  thereto  have  a  right  to  bring  any  of  the  motions 
provided  by  the  rules,  and  therefore  under  such  circumstances 
H  can  bring  his  motion  to  dissolve  the  interference  as  rede- 
clared.    (Nov.  29,  1899.) 

DuELL,  C]     Weikly  v.  Hodges,  68  MS.  Dec.  227. 

2.  Where  a  motion  for  dissolution  filed  by  one  party  and  a 
motion  to  amend  under  rule  109  filed  by  the  other  party  are 
transmitted  to  the  primary  examiner,  he  should  decide  both 
motions  and  not  suspend  action  on  the  motion  to  amend  until 


150  INTERFERENCES. 

the  decision  on  the  other  motion   becomes   final.      (Nov.    30, 

1898. ) 

Greeley,  A.  C]     Uebelacker  v.  Brill,  87  0.  G.  1783. 

3.  In  accordance  with  the  general  spirit  of  the  practice  all 
questions  which  can  fairly  be  considered  at  the  same  time 
should  be  so  considered.  The  object  of  this  practice  is  to 
diminish  the  number  of  appeals  and  expedite  the  final  determi- 
nation of  cases.  Id. 

4.  VV^here  the  real  contention  on  w^hich  a  motion  is  based  is 
that  the  matter  in  issue  was  not  disclosed  in  one  party's  case  as 
originally  filed,  Held,  that  the  question  involves  the  merits  and 
that  it  cannot  be  changed  into  one  which  is  reviewable  by  the 
commissioner  on  appeal  by  merely  misnaming  the  action  and 
calling  it  a  motion  to  shift  the  burden  of  proof.  (Aug.  21, 
1899.) 

Greeley,  A.  C]     Walsh  v.  Hallbauer,  88  0.  G.  2409. 

XIII.  Practice  on  Final  Hearing  and  After  Judgment. 

1.  A  decision  on  priority  makes  the  successful  party's  inven- 
tion a  part  of  the  prior  art  in  so  far  as  his  opponent  is  concerned 
to  the  same  extent  that  it  would  be  if  shown  in  a  prior  patent; 
it  is  if  anything  a  better  reference,  since  in  regard  to  certain 
matters  the  defeated  party  is  estopped  from  disputing  its  perti- 
nency.    (Feb.  10,  1899.) 

Greeley,  A.  C]     Uebelacker  v.  Brill,  66  MS.  Dec.  271. 

2.  Where,  after  judgment  on  the  record  in  an  interference 
proceeding  between  foreign  applicants,  a  motion  made  by  the 
defeated  party  to  reopen  the  case  to  tr}''  the  question  of  origi- 
nality was  granted,  Held,  that  the  burden  of  proof  is  upon 
said  defeated  party  to  prove  be3''ond  a  reasonable  doubt  that 
his  opponent  obtained  a  knowledge  of  the  invention  from  him, 
and  upon  his  failure  to  sustain  such  burden  or  to  show  that 
his  opponent  was  not  in  fact  the  original  inventor,  there  is  no 
warrant  for  withholding  a  patent  from  the  successful  party. 
(Nov.  18,  1899.) 

Duell,  C]     Shiels  v.  Lawrence  &  Kennedy,  68  MS.  Dec.  201. 

3.  The  claims  of  a  defeated  party  to  an  interference  to  be 
allowable,  must  not  only  be  patentable  over  the  issue  itself,  but 


INTERFERENCES.  151 

over  the  structure  of  the  successful  party  to  which  that  issue 
was  drawn.  The  structure  to  Avhich  the  claim  is  drawn  and 
not  merely  the  claim  itself  is  the  thing  that  is  in  controversy, 
and  after  a  decision  on  priority,  the  defeated  party  obviously 
should  not  be  permitted  to  insert  other  claims  to  the  same 
matter,  although  they  may  contain  specific  differences,  and 
thereby  provoke  a  second  interference  in  regard  to  the  same  de- 
vice previously  contested.  To  do  so  would  be  to  provide  a  way 
whereby  a  defeated  party  to  an  interference  could  by  successive 
interferences  indefinitely  delay  the  issue  of  a  patent  to  the  suc- 
cessful party.      (Nov.  11,  1899.) 

Greeley,  A.  C]     Harkness  v.  Strohm,  68  MS.  Dec.  157. 

4.  Rule  127  provides  that  "A  second  interference  will  not  be 
declared  upon  a  new  application  for  the  same  invention  filed  by 
either  party,  and  it  necessarily  follows  that  a  second  interfer- 
ence between  the  same  applications  will  not  be  declared." 
"  The  same  invention  "  means  the  same  substantive  matter,  and 
not  that  it  shall  be  claimed  in  the  same  way.  These  words 
mean  practically  the  same  thing  in  reference  to  successive  inter- 
ferences, as  they  are  defined  by  the  courts  as  meaning  in  the 
rulings  made  by  them  that  a  party  cannot  have  two  patents  for 
the  same  invention.  (Miller  v.  Eagle  Mfg.  Co.,  6G  0.  G.  845, 
C.    D.    1894,    147  ;  Fassett  v.   Ewart  Mfg.  Co.,  64  0.  G.  439.) 

Id 

5.  The  examiner's  action  in  suggesting  to  a  defeated  party 
claims  filed  by  a  successful  party  to  an  interference,  after  the 
decision  of  priority  of  invention  for  the  purpose  of  a  second 
interference  Avas  irregular  and  improper,  and  the  second  inter- 
ference in  regard  to  those  claims  should  not  have  been  declared. 

Id. 

XIV.  Preliminary  Statements. 
(a)  In  General. 
1.  The  filing  of  a  preliminary  statement  by  an  applicant 
stating  that  he  made  the  invention  of  the  issue  at  a  certain  date 
does  not  estop  that  party  from  afterward  alleging  in  a  motion 
for  dissolution  that  he  does  not  claim  that  invention.  Prelim- 
inary statements  are  necessarily   made  with   reference  to  the 


152  INTERFERENCES. 

invention  disclosed  in  a  party's  own  case  upon  the  presumption 
that  the  issue  apphes  to  that  invention.      (Jan.  16,  1899.) 
Greeley,  A.  C]     Sadtler  v.   Carmichael  v.   Smitli,   8(3  0.   G. 
1498. 

2.  The  rule  of  tl)e  Patent  Office  prescribing  that  "the  parties 
will  be  strictly  held  in  their  proofs  to  the  dates  set  up  "  in  their 
preliminary  statements  is  in  accordance  with  right,  reason,  and 
with  the  principles  of  justice,  for  otherwise  parties  might  be 
misled  to  their  detriment.  (C.  A.  D.  C,  Feb..  8,  1899.) 
Morris,  J.]     *  Bader  7^  Vajen,  87  0.  G.  1235. 

3.  Interferences  are  declared  for  the  purpose  of  determining 
the  question  of  priority  or  originality  of  invention  between  two 
or  more  parties.  Preliminary  statements  are  the  pleadings  of 
the  parties,  and  set  forth  certain  facts  as  to  conception,  dis- 
closui'e,  and  reduction  to  practice,  and  to  the  allegations  set  up 
in  the  preliminary  statements  the  evidence  must  respond. 
(June  20,  1899.) 

Duell,  C]     Huber  i;.  Aiken,  88  0.  G.  1525. 

4.  It  is  important  that  the  extent  of  use  of  a  completed 
invention  be  disclosed  in  the  preliminary  statement ;  but  it  is 
not  necessary  that  such  disclosure  should  be  prolix  and  give 
unnecessary  details  ;  but  it  should  set  forth  in  concise  and 
explicit  terms  the  extent  of  use  of  the  completed  invention. 
(Oct.  26,  1899.) 

Duell,  C]     Loeben  v.  Hamrick,  89  0.  G.  1672. 
XIV.  Preliminary  Statements. 
(h)  Amendment  of. 
1.   The  bare  statement  of  an  interferent  that  he  did  not  recol- 
lect certain  circumstances  material  to  his  cause  is  not  a  good 
ground  upon  which  to  permit  an  amendment  to  his  preliminary 
statement,  particularly  where  it  carries  his  date  of  reduction  to 
practice  back  of  that  alleged  by  his  opponent,  for  such  a  state- 
ment could  be  made  in  every  case,  and  there  is  no  way  of  con- 
troverting it.     A   party  who  relies  exclusively  upon  his  own 
memory  and  subsequently  finds  himself  mistaken,  must  accept 
the  consequences,   since  they  are  due  to  his  own  negligence. 
The  allegation  in  the  original  statement  may  in  fact  be  wrong 


ixTKRi  i:hexces.  153 

and  the  error  may  l)e  material  to  the  moving  })arty's  ease,  but 
that  alone  is  not  deeisive  of  tlie  question  where  it  is  due  to  care- 
lessness or  neghgence,  since  the  rights  of  other  paities  arc  to  be 
considered.      (Nov.  6,  1899.) 
Greeley,  A.  C]      Warner  r.  Gorton  t'.  Smith,  68  MS.  Dee.  125. 

2.  It  has  been  the  uniform  practice  of  the  Oflice,  founded 
upon  good  and  substantial  reasons,  to  require  a  party  to  exer- 
cise diligence  and  care  in  discovering  and  alleging  his  correct 
dates  in  his  original  statement,  and  to  refuse  to  permit  an 
amendment  in  a  material  matter  unless  such  diligence  and  care 
have  been  clearly  shown.  If  an  amendment  were  permitted  in 
every  case  Avhere  a  party  relied  solely  upon  his  own  memory 
without  making  any  efforts  to  confirm  his  opinion,  merely  be- 
cause he  subsequently  found  himself  mistaken,  the  useful  effect 
of  preliminary  statements  would  be  destroyed.  (Nov.  7,  1899.  ) 
Greeley,  A.  C]     Silverman  v.  Hendrickson,  68  ]\IS.  Dec.  130. 

3.  After  decision  on  priority  liad  been  rendered  by  the  Exam- 
iner of  Interferences  and  an  appeal  from  his  decision  had  been 
taken,  a  petition  asking  that  the  jurisdiction  of  the  Examiner  of 
Interferences  be  restored  for  the  consideration  of  a  motion  to 
amend  a  preliminary  statement  was  granted  under  the  circum- 
stances of  this  case.      (Jan.  11,  1899.) 

Greeley,  A.  C]     Richardson  v.  Humphrey,  86  O.  G.  1804. 

4.  When  it  is  contended  tliat  the  mistake  in  the  preliminary 
statement  was  not  discovered  until  it  was  made  apjiarent  by  the 
decision  of  the  Examiner  of  Interferences  on  i)riority  and  the 
moving  party  uses  reasonable  diligence  thereafter  in  presenting 
his  motion  to  amend,  Held,  that  the  jurisdiction  of  the  Examiner 
of  Interferences  will  be  restored  to  consider  the  motion.       Id 

5.  On  a  petition  that  the  jurisdiction  of  the  Examiner  of 
Interferences  be  restored  for  the  purpose  of  considering  an 
amendment  to  a  preliminary  statement,  the  question  as  to 
whether  or  not  that  amendment  shall  be  admitted  is  not  up 
for  consideration,  ])ut  merely  the  question  whether  proi)er  dili- 
gence has  been  exercised  in  presenting  that  motion.  Id. 

6.  While  motions  to  amend  preliminary  statements  are  to  be 
decided  in  vieAV  of  the  particular  facts  disclosed  in  each  case, 
and  therefore  no  cast-iron  rule  can  be  applied  to  all  cases,  it 


154  INTERFERENCES. 

may  be  said  that  amendments  to  preliminary  statements  should 
be  permitted  only  when  the  motion  has  been  made  promptly 
after  the  discovery  of  the  error,  and  then  only  when  equity  and 
justice  demand  it — as,  for  example,  in  a  case  where  the  testi- 
mony of  neither  party  has  been  taken,  or,  if  it  has  been  taken, 
where  the  other  party  will  not  be  injured,  save  as  the  true  state 
of  facts  may  be  injurious,  and  the  opponent  would  not  be  mis- 
led nor  the  expenses  of  the  proceeding  increased.  (Jan.  28, 
1899. ) 
DuELL,  C]   .  Whitney  v.  Gibson,  86  O.  G.  1983. 

7.  An  amendment  to  a  preliminary  statement  was  admitted 
where  a  mistake  therein  was  not  discovered  until  the  beginning 
of  the  taking  of  testimony  and  notice  of  an  intention  to  amend 
was  given  at  that  time.  (A^'ebb  r.  Levedahl,  84  0.  G.  810.) 
(Dec.  8,  1898.) 

Greeley,  A.  C.]     Ancora  v.  Keiper,  86  0.  G.  2171. 

8.  An  amendment  made  to  correct  a  mistake  in  a  preliminary 
statement  may  be  admitted  where  it  does  not  change  the  date  of 
conception,  disclosure,  or  reduction  to  practice.  (Maltby  v. 
Miehl,  82  0.  G.  749.)  Td. 

9.  Where  a  party  to  an  interference  took  testimony  to  prove 
a  reduction  to  practice  of  his  invention  at  a  date  prior  to  that 
set  up  in  his  preliminary  statement,  HehJ,  that  said  testimony 
without  amendment  to  the  preliminary  statement  duly  made  by 
the  authority  of  the  Commissioner  of  Patents  was  inadmissible 
and  entitled  to  no  consideration.  (Colhoun  v.  Hodgson,  70 
0.  G.  276.)     (C.  A.  D.  C.     Feb.  8,  1899.) 

Shepard,  C.]     *  Cross  v.  Phillips,  87  0.  G.  1399. 

10.  The  requirement  of  specific  preliminary  statements  by  the 
contending  parties  under  oath  is  a  reasonable  one,  and  experi- 
ence has  demonstrated  its  special  adaptation  to  the  conditions 
that  ordinarily  exist  in  interference  cases.  ^Id. 

11.  The  dates  of  conception  and  reduction  to  practice  are 
peculiarly  within  the  knowledge  of  the  inventor,  and  the  facts 
by  which  they  may  be  established  are  naturally  of  difficult  con- 
tradiction by  his  adversary.  Hence  it  is  quite  important  to  the 
administration  of  justice  in  contests  between  them  that  he  be 
required  to  state  those  dates  with  reasonable  certainty  before 


INTERFERENCES.  155 

notice  of  the  foundations  of  his  adversary's  claim.  These  pre- 
liminary statements  constitute  what  may  he  called  the  "  plead- 
ings "  in  the  case,  and  to  their  allegations  the  evidence  must 
respond.  *A/. 

12.  The  rule  of  the  Patent  Office  which  permits  the  statement 
of  either  party  to  an  interference  to  be  amended  where  material 
error  has  been  committed  through  inadvertence  or  mistake  and 
its  correction,  is  essential  to  the  ends  of  justice,  is  reasonable  and 
just  and  seems  to  conform  as  near  as  may  be,  considering  the 
peculiar  character  of  interference  cases,  to  the  general  rule  pre- 
vailing in  courts  of  equity.  */^/. 

13.  In  courts  l)oth  of  law  and  equity  the  right  to  amend  is 
not  an  absolute  one,  but  rests  in  the  discretion  of  the  court, 
and  the  exercise  of  this  discretion  is  not  reviewable  unless  it 
may  be  in  case  of  its  palpable  abuse.  Necessarily  the  allow- 
ance or  refusal  of  leave  to  amend  a  preliminary  statement  in  an 
interference  case  rests  in  like  manner  in  the  discretion  of  the 
Commissioner  of  Patents,  and  it  might  be  said  for  even  a 
stronger  reason,  because  he  is  vested  with  the  authority  to 
make  the  needful  rules  for  the  regulation  of  the  practice  of  his 
Office  without  the  supervising  power  of  an  appellate  tribunal. 

14.  Appeals  do  not  lie  to  this  court  from  all  or  any  prelimin- 
ary decisions  in  matters  of  interferences,  though  seriously  affect- 
ing the  rights  of  the  parties,  but  only  from  those  wherein  the 
priority  of  the  .claim  to  the  invention  has  been  finally  awarded. 
(Westinghouse  v.  Duncan,  66  0.  G.  1009.)  *7t/. 

15.  If  the  exercise  of  the  discretion  of  the  Commissioner  in 
the  matter  of  allowing  and  refusing  leave  to  amend  preliminary 
statements  be  subject  to  review  by  the  Court  of  Appeals  of  the 
District  of  Columbia  at  all,  it  must  be  confined  to  those  cases 
where  the  question  comes  up  i)roperly  with  the  appeal  from  the 
decision  on  the  merits  and  where  it  can  be  made  clearly  to  aj)- 
pear  that  this  discretion  has  been  abused  to  the  extent  of  caus- 
ing a  palpable  miscarriage  of  justice.  '-^Id. 

16.  After  a  decision  on  priority  an  amendment  to  the  prelim- 
inary statement  may  be  permitted  where  a  material  error  has 
occurred  through  inadvertence  or  mistake  and  it  clearly  appears 
that  there  was  no   negligence  in   discovering  the  error  or  in 


156  INTERFERENCES. 

bringing  the  motion  to  amend  and  that  the  correction  is  essen- 
tial to  the  ends  of  justice.      (July  7,  1899.) 
Greeley,  A.  C]     Richardson  v.  Humphrey,  88  0.  G.  2241. 

17.  After  testimony  has  been  taken  an  amendment  to  a  pre- 
liminary statement  will  not  be  permitted  where  no  excuse  what- 
ever is  given  for  not  making  the  motion  to  amend  earlier  or  for 
not  sooner  discovering  the  alleged  error  in  the  original  statement. 
(Aug.  14,   1899.) 

Greeley,  A.  C.]      Miehle  v.  Read,  89  0.  G.  354. 

18.  The  suggested  possibility  that  the  Office  ma}^  throw  out 
of  consideration  entirely  evidence  of  an  earlier  date  of  invention 
than  that  alleged  in  the  preliminar}'  statement  and  so  may  not 
accord  to  a  party  even  the  date  alleged,  Held,  not  alone  a  suffi- 
cient ground  upon  which  to  permit  an  amendment  to  the  state- 
ment, since  to  so  hold  would  virtually  nullify  the  rule  requiring 
diligence.  The  statement  would  then  have  no  useful  purpose 
or  effect,  since  in  all  cases  it  would  be  changed  to  conform  to 
the  testimony.  Id. 

19.  Where  a  motion  was  made  by  a  party  to  an  interference 
that  his  opponent  be  required  to  amend  his  preliminary  state- 
ment b}^  adding  thereto  a  statement  showing  the  extent  of  use 
of  the  invention  or,  if  it  has  not  been  used  to  any  extent,  specifi- 
cally disclosing  that  fact,  Held,  that  under  rule  110  the  motion 
should  be  granted.      (Oct.  26,  1899.) 

DuELL,  C.]     Loeben  v.  Hamirick,  89  C.  G.  1672. 

XV.   Priority. 

(a)  In,  General. 

1.  Where  P  made  the  application  drawing  for  A  and  put  on 
said  drawing  A's  name  as  the  inventor  and  made  no  claim  at 
that  time  that  he  was  the  inventor.  Held,  that  such  actions  are 
strongl}'  against  his  claim  to  l)e  the  inventor,  and  as  his  claim 
to  the  invention  is  not  supported  by  any  testimony  except  his 
own  he  cannot  prevail  over  A,  the  senior  party.  (C.  A.  D.  C. 
Dec.  9,  1898.) 

Morris,  J.]     *  Pickles  v.  Aglar,  86  0.  G.  346. 

2.  Where  W  relied  upon  his  record  date  to-  prove  priority 
and  A  took  testimony  and  claimed  that  he  disclosed  the  inven- 


INTERFERENCES.  157 

tion  to  W  Ix'foiv  ^^'  lilfd  liis  iqjplication,  Ilchl^  lliat  \\''s  fail- 
ure to  rebut  this  Hsscrtion  of  A's  fiirnislicd  convincing  evidence 
that  A  was  the  ])ri()r  inventor.  (C.  A.  D.  C.  Jan.  10,  1899.) 
Alvey,  J.]     *WinsloAv  r.  Austin,  80  0.  G.  2171. 

3.  The  fact  that  A  took  an  assignment  from  L  and  K,  who 
were  the  assignees  of  A\',  ought  not  to  he  taken  as  an  a(hnission 
on  his  i)art  that  he  in  realit}'  and  truth  had  no  claim  to  the 
invention  involved  in  the  issue,  and  that  the  sole  and  exelusive 
right  was  in  W.  ^^fd. 

4.  It  is  a  well-settled  |)rincii)le  in  patent  laM-  that  as  between 
rival  inventors  the  date  of  invention  may  be  fixed  and  will  take 
precedence  from  the  time  at  which  a  complete  and  intelligible 
embodiment  of  the  subject  of  invention  is  i)roduced,  by  which 
those  skilled  in  the  art  could  readily  understand  it.  (C.  A. 
D.  C.     Oct.  4,  1899.) 

Alvey,  J.]     ^-i^Hulett  r.  Long,  89  0.  G.  1141. 

5.  W,  the  senior  party,  filed  his  application  on  October  28, 
1893.  B,  the  Junior  party,  filed  on  October  26,  1895.  The 
interference  was  declared  on  the  broad  issue,  which  was  covered 
by  a  broad  claim  made  by  B  when  he  filed  his  apjilication. 
W,  however,  did  not  make  the  broad  claim  until  April  29, 
1896.  The  testimony  shows  that  W  was  the  first  to  conceive  of 
the  invention  and  that  B  did  not  in  any  manner  reduce  it  to 
practice  prior  to  Ws  filing  date.  Held^  that  if  the  broad  claim 
is  patentable  it  must  belong  to  the  first  inventor  of  the  specific 
machine,  if  to  any  one,  and  that  one  is  W.  It  certainly  cannot 
be  allowed  to  any  subsequent  inventor  of  any  other  specific 
mechanism.      (C.  A.  D.  C.     Apr.  4,  1899.) 

Morris,  J.]     *  Bechman  r.  Wood,  89  0.  G.  2459. 

6.  Held^  further,  that  the  broad  claim  is  not  })atentat)le  to 
either  party — not  to  B,  because  he  was  not  the  first  to  invent  an 
"independent  transferring  mechanism"  in  printing-machines 
in  the  combination  described;  not  to  A\',  because  he  did  not 
make  the  claim  before  his  rival  made  the  discovery  of  his  own 
patentable  invention.  ^=/r/. 

7.  Held,  further,  that  it  is  not  competent  for  ^^',  who  had 
failed  to  make  a  broad  claim  and  thus  left  the  field  oi)en  for 
other  specific  inventions  than   his  own,  to  seek  to  control  all 


158  INTERFERENCES. 

such  specific  inventions  by  procuring  a  patent  on  the  broad 
claim  which  he  did  not  advance  prior  to  the  making  thereof 
by  B.  If  the  broad  claim  could  be  held  to  l)e  patentable  to 
W,  the  effect  of  a  patent  upon  it  to  him  would  be  unjustly 
retrotractive,  for  it  would  sweep  within  its  control  all  specific 
inventions  in  the  same  field  made  previously  to  the  time  when 
he  made  his  claim.  (Chicago  &  Northwestern  Railroad  Co.  ?'. 
Sayles,  15  0.  G.  248;  97  U.  S.  554,  cited.)       Id. 

8.  Held^  further,  that  Avhile  both  parties  to  the  interference 
are  or  may  be  entitled  to  patents  for  their  respective  specific 
devices,  neither  one  of  them  is  entitled  to  a  patent  for  the  broad 
claim  of  the  issue,  and  therefore  there  should  be  no  judgment 
of  priority  of  invention  to  either  party  with  reference  to  the 
broad  claim.  Id. 

9.  Where  an  applicant  for  a  patent  has  restricted  himself  in 
the  first  instance  to  a  narrow  claim  for  a  specific  device  to  eft'ect 
a  certain  result  and  subsequently  another  applicant  comes  into 
the  Office  with  another  narrow  claim  for  another  specific  device 
to  effect  the  same  result  and  thereafter  the  first  applicant  broadens 
his  claim  into  a  generic  one,  so  as  to  cover  and  dominate  all  spe- 
cific devices  to  effect  such  result,  assuming  that  their  specific 
devices  have  actually  been  invented  in  the  order  of  their  appli- 
cation to  the  Office,  the  utmost  liberality  of  amendment  will  not 
justify  the  destruction  of  the  rights  of  the  second  applicant  to 
his  own  specific  device,  and  the  fact  that  the  second  applicant 
may  have  l)een  the  first  to  make  the  broad  generic  claim  and 
that  the  first  applicant  then  broadened  his  claim  into  generic 
proportions  cannot  affect  this  conclusion.  (C.  A.  D.  C. ,  Dec. 
6,  1899.) 

Morris,  J.]     *Bechman  v.  Wood,  89  0.  G.  2462. 

10.  Where  the  first  applicant  was  found  to  be  the  true  first 
and  original  inventor  of  his  own  specific  device  and  apparently 
the  first  inventor  of  any  device  of  the  kind,  and  the  second  ap- 
plicant was  likewise  found  to  be  the  true  first  and  original  in- 
ventor of  the  specific  device  stated  in  his  application,  this  being 
the  order  of  invention,  Held.,  that  the  second  applicant  could 
not,  under  any  principle  of  law  or  any  theory  of  justice,  be  al- 
lowed the  broad  claim  which  would  have  dominated  the  inven- 
tion of  his  i^redecessor  in  the  field,  and  neither  could  that  pre- 


I NTK  H  fj:hkxce.s.  1 59 

decessor  be  allowed  tlie  broad  claim,  for  the  reason  that  lie  had 
not  advanced  it  before  the  arrival  of  the  other  party  on  the  field 
of  invention.  Id. 

11.  Held,  further,  that  by  making  the  narrow  claim  for  a 
specific  device  in  the  first  instance  the  first  ajjplicant  left  the 
field  open  for  all  who  would  make  other  different  devices  to 
accomplish  the  same  purpose,  and  it  would  not  be  right  or  just 
that  he  should,  after  the  invention  of  such  another  device  l)y 
another  person  be  permitted  to  go  back  and  broaden  his  claim 
so  as  to  sweep  this  second  device  within  the  scope  of  his  own 
original  application,  even  though  the  broad  claim  might  prop- 
erly have  been  advanced  in  the  beginning,  and  even  though 
under  other  circumstances  he  might  have  effectively  broadened 
his  claim  in  the  course  of  the  prosecution  of  the  api)lication  and 
procured  or  entitled  himself  to  a  patent  for  such  broad  claim. 

Id. 

12.  If  an  inventor  comes  to  the  Patent  Office  with  an  appli- 
cation in  which  he  first  restricts  himself  to  a  narrow  claim  for  a 
specific  device,  but  which  he  is  entitled  by  the  process  of  amend- 
ment to  broaden  into  a  generic  claim,  and  if  he  does  in  fact  so 
broaden  it,  he  may  entitle  himself  to  a  patent  for  the  broad  claim 
unless  in  the  meantime  the  right  of  some  other  person  has  ac- 
crued to  some  other  narrow  claim  for  a  similar  device  to  effect 
the  same  purpose  which  would  be  dominated  by  the  broader 
claim  of  the  first  applicant.  It  is  not  just  that  rights  which 
have  previousl}^  accrued  should  be  overthrown  by  amendments 
subsequently  made.  (Chicago  &  Northwestern  Railway  Co.  v. 
Sayles,  97  U.  S.  554;  15  O.  G.  243,  cited.)  "     Id. 

13.  Neither  party  to  tliis  interference  is  entitled  to  prevail 
against  the  other  on  the  broad  claim  of  the  issue,  the  first  being 
estopjied  from  setting  it  up  against  the  second  applicant  in  con- 
sequence of  the  intervening  rights  of  the  latter  to  his  own  spe- 
cific device,  and  the  second  applicant  being  precluded  from 
having  the  benefit  of  it  for  the  reason  that  he  was  not  the  first 
on  the  field  of  invention.  Id. 

14.  Tlie  former  decision  holding  that  as  \\'  did  not  advance 
the  broad  claim  of  the  issue  until  after  B  had  filed  his  applica- 
tion therefore  he  is  not  entitled  to  a  judgment  of  priority  for  such 
broad  claim,  and  that  neither  i>arty  is  entitled  to  a  judgment  of 


160  INTERFERENCES. 

priority  of  invention  or  to  a  patent  for  tlie  Ijroad  issue  is  adhered 
to.  Id. 

XV.  Priority. 

(i)  Abandoned  ExpcrimenU. 
AVhere  T  constructed  and  tried  an  apparatus  embodying  the 
issue  in  February,  1889.  which  proved  unsatisfuctory  and  dis- 
appointing to  him,  and  which  he  l)Oxed  up  and  laid  away  in 
his  shop  until  the  latter  part  of  1892,  when  he  shipped  it  to  his 
attorney  u])on  hearing  that  B  had  appeared  Avith  a  successful 
device  of  the  same  general  character,  Held,  that  what  T  did  in 
1889  amounted  to  no  more  than  an  experiment,  Avhich  was 
abandoned  and  revived  only  after  B's  appearance  in  the  field, 
and  priority  of  invention  awarded  to  B.  (C.  A,  D.  C,  Jan.  3, 
1899.) 
Shepard,  J.]     *Traver  r.  Brown,  86  0.  G.  1324. 

XV.   Priority. 

(c)   Employer  and  Employe. 

1 .  The  first  inventor  cannot  be  deprived  of  an  award  of  priority 
because  he  was  at  one  time  employed  by  his  opponent,  who  had 
disclosed  to  him  a  portion  of  the  issue  of  the  interference,  when 
it  appeared  that  he  was  not  employed  to  devise  or  perfect  an 
invention  being  developed  by  the  employer,  or  the  suggestions 
or  improvements  made  by  the  first  inventor  were  not  merely 
"ancillary  to  the  plan  and  preconceived  design  of  the  em- 
ployer."    (Mar.  2,  1899.) 

DuELL,  C]     Streat  v.  Freckleton,  87  0.  G.  695. 

2.  An  employe  performing  all  the  duties  assigned  to  him  in  his 
department  of  service  may  exercise  his  inventive  faculties  in  any 
direction  he  chooses  with  the  assurance  that  whatever  invention 
he  may  thus  conceive  and  perfect  is  his  individual  property. 
(Solomons  v.  U.  S.,  137  U.  S.  342.)  Id. 

XV.   Priority. 

(f/)  Foreign  Patents. 
R  applied  for  a  Swiss  patent  on  INIarch  2,  1896,  and  on  June 
30,    1896,   a  certificate  was  issued  by  the  Swiss  Patent  Office 
stating  that  a  provisional  specification,  dated  March  2,  1896, 


INTERP''ERENCES.  IGl 

had  been  registcnd  under  No.  11, 7-^3  and  that  the  ]>atent  docu- 
ment Avould  ininiediatel}'  after  tlie  publication  of  the  descrijjtion 
and  drawing  be  executed.  Notice  of  the  registration  Avas  ])ub- 
lished  in  tlie  Patent-Liste  of  the  Swiss  office,  a  cojiy  of  which 
publication  was  received  in  the  United  States  Patent  Otlice  on 
August  7,  1897;  but  it  contained  no  description  of  the  Swiss 
patent.  The  making  public  of  the  specification  of  the  Swiss 
patent  and  its  publication  and  printing  were  postponed  for  six 
months,  which  ended  September  2,  1896.  Held,  that  R's  Swiss 
patent  was  a  secret  patent  until  September  2,  1896,  a  date  sub- 
sequent to  Ws  filing  date  in  this  country,  and  that  no  date  can 
be  given  to  R's  Swiss  patent  which  will  overcome  Ws  date  of 
filing  his  application  in  this  country,  and  priority  a-\varded  to 
W.  (June  23,  1899.) 
DuELL,  C]     Roschach  v.  Walker,  88  0.  G.  1888. 

XV.  Priority. 

(e)  Invention  made  by  third  ixirty. 

1.  Where  A,  the  junior  party,  made  out  2i  prima  fade  case  in 
support  of  his  claim  for  priority  of  invention  and  F  did  not  at- 
tempt to  rebut  or  overcome  it,  but  relied  upon  the  evidence  of 
L,  one  of  A's  witnesses,  to  show  that  L  and  not  A  was  the  in- 
ventor of  the  subject-matter  of  the  invention,  Held,  that  L's 
testimony  cannot  l)e  used  in  favor  of  F,  and  priority  of  inven- 
tion is  therefore  awarded  to  A.  [The  decision  of  the  Assistant 
Commissioner,  Antisdel  v.  Foster,  65  MS.  Dec.  390,  affirmed.] 
(C.  A.  D.  C.     May  2,  1899.) 

Alvey,  J.]     ^Foster  r.  Antisdel,  88  0.  G.  1527. 

2.  Interference  proceedings  are  instituted  to  determine  as  be- 
tween the  parties  thereto  which  of  them  is  entitled  to  an  aw^ard 
of  priority  of  the  invention  claimed.  Both  cannot  be  entitled 
to  it,  but  one  may  be  entitled  as  against  the  other,  though  there 
may  be  some  third  party  who  might,  if  the  claim  of  that  person 
were  placed  in  issue  as  betw^een  that  person  and  one  or  both  of 
the  parties  to  the  interference  proceeding,  show  that  lie  was  in 
fact  and  in  reality  entitled  to  an  award  of  priority  of  the  inven- 
tion in  controversy.  Id. 

3.  Evidence  that  some  other  party  than  the  parties  to  the 
interference  proceeding  is  really  the  inventor  of  the  device  in 

11 


162  INTERFERENCES. 

issue  is  impertinent  to  the  issue  and  cannot  he  received  or  con- 
sidered hy  those  charged  with  the  duty  of  determining  the 
issue.  /(/. 

4.  n  the  practice  obtained  of  allowing  the  claims  or  pre- 
tensions of  any  or  all  persons  though  not  parties  to  the  inter- 
ference proceedings  to  be  set  up  as  a  means  of  defeating  the 
claims  of  one  of  the  parties,  it  would  be  difficult  if  not  impos- 
sible in  many  cases  to  try  the  interference  issue  as  between  the 
immediate  parties  to  it.  Such  practice  would  open  the  door  to 
collusion,  and  perjury  would  be  the  recourse  of  many  who 
failed  to  support  their  claims  by  legitimate  evidence.  Id. 

XVI.   Reduction  to  Practice. 
(a)  In  General. 

1.  It  is  an  elementary  principle  in  patent  law  that  he  who 
first  reduces  to  practice  is  to  be  regarded  as  the  true  inventor  of 
the  idea  or  device  so  reduced  from  a  mere  abstraction  to  a  con- 
crete form,  in  the  absence  of  proof  that  he  has  only  elaborated 
the  ideas  of  others  or  of  proof  that  there  has  been  prior  con- 
ception of  the  invention  by  another,  with  a  showing  of  due 
diligence  in  the  way  of  effort  to  reduce  it  to  practice.  (C.  A. 
D.  C,  Feb.  8,  1899.) 

Morris,  J.]     *Bader  r.  Vajen,  87  0.  G.  1235. 

2.  Reduction  to  practice  by  B  would  not  avail  him  as  against 
V  if  it  were  shown  that  B  was  merely  obeying  the  instructions 
of  V  and  giving  effect  to  the  conceptions  of  the  latter.         Id. 

3.  A  reasonable  doubt  as  to  what  constitutes  a  reduction  to 
practice  will  be  resolved  against  the  inventor,  and  special  cir- 
cumstances— as  for  example,  unreasonable  delay  in  making 
practical  or  commercial  use  of  the  invention  or  in  applying  for 
a  patent  or  the  like — would  have  a  tendency  to  raise  this  doubt 
in  a  particular  case.  (C.  A.  D.  C.  May  4,  1899.) 
Shepard,  J.]     *  Rente  v.  Elwell,  87  0.  G.  2119. 

XVI.  Redection  to  Practice. 
(ft)  Actual. 
1.   By  actual  reduction  to  practice  the  right  to  the  invention 
becomes  perfect,  and  can  only  become  subordinate  to  the  claim 
of  a  subsequent  bona  fide  inventor  by  some  such  course  of  con- 


INTERFERENCES.  1G3 

duct  as  that  shown  m  Mason  r.  ][(i)l)urn,  (84  O.  (J.  147)   (C. 

A.  1).  C,  Jan.  3,  1899.) 

Shepard,  J.]     *P:sty  V.  Newton,  86  0.  G.  799. 

2.  The  importance  of  mere  delay  while  the  inventor  is  en- 
gaged in  the  prosecution  of  other  improvements  in  the  same 
art  is  of  more  or  less  weight,  according  to  circumstances,  in 
determining  whether  the  attemi)ted  reduction  to  practice 
amounted  to  an  actual  reduction  or  an  ahandoned  experiment. 

3.  A  fodder-shredder  in  wiiich  a  cutter-har  was  taken  out  of 
an  old  machine,  leaving  an  inch  of  open  space  between  the 
edges  of  the  cutter-teeth  and  the  periphery  of  the  lower  feed- 
roll  at  the  point  of  nearest  approach,  is  not  a  reduction  to  prac- 
tice of  an  issue  which  calls  for  cutters  arranged  in  immediate 
relation  to  the  lower  feed-roll,  whereby  the  points  of  the  teeth 
of  the  cutter  are  brought  close  to  the  said  feed-roll.  (C.  A.  D. 
C,  Jan.  10,  1899.) 

Shepard,  J.]     *  Tracy  ef  al.  v.  Leslie,  87  0.  G.  891. 

4.  Where  the  records  of  the  case  show  that  the  primary  ex- 
aminer had  found  no  novelty  in  the  omission  of  a  cutter-bar  in 
the  old  form  of  fodder-shredder  from  the  new  combination  and 
had  "  with  doubt  and  hesitation  "  declared  novelty  to  exist  in 
the  restricted  action  of  the  cutter-teeth  in  inunediate  relation 
with  the  lower  feed-roll  acting  as  a  cutter-bar  in  the  very  closest 
approach  that  could  be  accomplished,  Held,  that  the  slight  dif- 
ference in  arrrngement  being  the  very  thing  and  the  only  thing 
that  gave  novelty  to  the  new  combination,  it  must  follow  that 
the  practical  test  of  a  combination  which  did  not  fall  within  the 
specific  combination  is  not  a  reduction  to  practice  of  that  coui- 
bination.      (Breul  v.  [Smith,  78  0.  G.  1906,  cited.)  */f/. 

XVI.  Reduction  to  Practice. 
(c)  Condnictlve. 
Where  a  second  application  was  tiled  while  a  tirst  application 
was  forfeited,  and  a  comparison  of  the  two  applications  shows 
that  the  drawing  of  the  first  is  the  same  as  one  sheet  of  the 
second  and  that  the  specification  of  the  first  is  incorporated  in 
the  second,  and  additional  drawings  are  filed  with  the  second 
application  and  additional  matter  is  included  in  the  specification 


164  INTERFERENCES. 

thereof  which  embodies  some  features  not  in  the  first,  Held, 
that  on  an  interference  on  the  second  application  the  applicant 
should  have  the  benefit  of  his  original  application  as  a  con- 
structive reduction  to  practice  of  the  invention  set  forth  therein 
and  embodied  in  the  second  application.  (C.  A.  D.  C. ,  Jan.  3, 
1899. ) 
Shepard,  J.]     *Cain  v.  Park,  86  0.  G.  797. 

XVI.   Reduction  to  Practice. 
(r/)  Diligence. 

1.  Where  the  party  first  to  conceive  but  the  last  to  reduce  to 
practice  did  nothing  for  nine  years  between  his  conception  and 
reduction  to  practice  except  to  make  drawings  and  talk  about 
the  invention  occasionally  and  to  urge  one  or  two  persons  "to 
take  it  up,"  and  in  the  nieantime  had  taken  out  patents  on  the 
same  subject-matter,  Held,  that  there  is  no  sufficient  excuse 
offered  for  delay  in  reducing  to  practice.  (C.  A.  D.  C.  Dec. 
9,  1898.) 

Morris,  J.]     *  Marvel  v.  Decker  et  al,  86  0.  G.  348. 

2.  Although  M  was  the  first  to  conceive,  he  did  not  show 
reasonable  diligence  in  reducing  his  invention  to  practice,  and 
D  having  conceived  and  reduced  to  practice  in  the  meantime, 
Held,  that  the  decision  of  the  commissioner  should  be  affirmed 
and  priority  awarded  to  D.  *  Id. 

3.  Where  an  inventor  made  and  tested  a  device  and  then  par- 
tially dismantled  it  and  put  it  in  a  private  drawer  \\  here  it  re- 
mained for  five  years  before  appl3dng  for  a  patent,  when  he  had 
ample  means  to  patent  it  and  the  evidence  showed  that  he  had 
taken  out  other  patents.  Held,  that  his  right  to  a  claim  of 
priority  is  barred  where  it  is  shown  that  during  his  concealment 
of  his  invention  his  rival  had  entered  and  taken  possession  of 
the  field  and  reduced  the  invention  to  practice  and  given  its 
benefits  to  the  public.      (Mar.  21,  1899.) 

DuELL,  C]      Davis  v.  Forsyth  and  Forsyth,  87  0.  G.  516. 

4.  The  bare  statement  of  the  first  inventor  that  he  never 
abandoned  his  invention  counts  for  naught  in  the  light  of  such 
circumstances.  Id. 

5.  An  inventor  may  conceal  his  invention  for  an  unlimited 


INTERFERENCES.  1G5 

time  without  forfeitin<;  iiis  riglit  (o  a  ]):ik'nt,  provided,  liowevcr, 
that  no  statutory  har  intervenes  and  provided,  further,  that  no 
other  person  during  sueh  period  makes  the  same  invention  and 
secures  a  patent  therefor.  (Bates  r.  Coe,  lo  ().  G.  .'>o7,  and 
Mason  v.  Hei)hurn,  84  0.  (J.  147,  cited.)  /'/. 

6.  The  right  of  tlie  first  inventor  to  an  award  of  priority  he- 
comes  barred  by  tlie  designed  or  negligent  concealment  of  his 
invention  from  the  i)ul)lic  upon  the  entry  of  a  later  inventor  into 
the  same  field.  Id. 

7.  Where  it  a])pt^arcd  that  the  first  inventor  to  conceive  could 
have  completed  a  drawing  in  a  short  time  after  it  was  begun,  but 
he  took  five  months  to  do  so  because  there  was  no  hurry  for  it, 
and  after  the  drawing  was  finished  his  assignee  still  further  de- 
layed for  one  year  and  four  months  in  reducing  the  invention  to 
practice  because  there  was  no  hurry  to  reduce  it  to  practice,  as 
it  was  not  sooner  needed,  Held,  that  there  was  no  excuse  for 
such  delay  and  priority  of  invention  awarded  to  the  second  to 
conceive  but  the  first  to  reduce  to  practice.  (Feb.  27,  181)9.) 
DuELL,  C]     Kasson  v.   Hetherington,  88  0.  G.  1157. 

8.  Diligence  cannot  wait  upon  tlie  convenience  or  business 
arrangements  of  an  inventor  or  his  company.  (Dailey  v.  Jones, 
67  0.  G.,  1719,  cited.)  '         fd. 

9.  Where  it  was  shown  that  the  one  to  first  conceive  of  the 
invention  did  not  have  the  money  with  which  to  actually  reduce 
it  to  practice,  but  there  was  nothing  to  show  that  he  could  not 
have  filed  an  application  which  would  have  been  a  constructive 
reduction  to  practice  and  would  have  given  him  the  benefits  of 
an  actual  reduction.  Held,  that  there  was  no  excuse  for  delay 
and  priority  awarded  to  second  to  conceive.  Id. 

10.  There  is  no  general  rule  of  what  constitutes  due  diligence, 
that  being  a  question  to  be  determined  by  all  the  facts  and  sur- 
rounding circumstances  in  the  particular  case.  /(/. 

11.  De  Wallace  had  a  complete  conception  of  the  invention 
on  December  1,  1890,  when  he  em})loyed  a  skilled  mechanic  to 
embody  his  ideas  in  a  working  machine.  Scott  et  at.  proved 
conception  on  December  8,  1896,  and  reduced  the  invention  to 
practice  prior  to  reduction  to  practice  by  De  Wallace.  Held, 
that  as  De  A\'allace  was  actually  engaged  in  his  eflforts  to  reduce 


166  -  INTERFERENCES. 

the  invention  to  practice  when  Scott  et  at.  entered  the  field,  and 
as  his  delay  in  reducing  to  practice  was  not  unreasonable  under 
all  the  circumstances  disclosed  by  the  evidence,  priority  should 
be  awarded  to  De  Wallace  over  Scott  et  al.  (Decision  of  the 
Commissioner,  Scott  eiaZ.  v.  De  Wallace,  66  MS.  Dec,  30,  over- 
ruled.) (C.  A.  D.  C,  June  6,  1899.) 
Shepard,  J.]     De  Wallace  v.  Scott  et  al,  88  0.  G.,  1704. 

12.  No  hard  and  fast  rule  can  be  laid  down  as  to  what  consti- 
tutes diligence.  What  is  or  is  not  diligence  in  a  given  case  must 
depend  upon  its  special  facts  and  circumstances.  Some  indul- 
gence is  generally  extended  to  an  inventor  who  is  engaged  in  a 
bona  fide  attempt  to  perfect  his  invention.  (McCormick  v. 
Cleal,  83  0.  G.,  1514,  cited.)  Id. 

13.  While  circumstances  such  as  poverty,  sickness,  etc.,  tend 
to  excuse  delay  in  reducing  an  invention  to  practice,  they  will 
not  justify  indefinite  postponement  of  action  for  a  period  of 
years,  for  to  allow  them  to  have  that  effect  would  be  in  many 
cases  to  close  entirely  the  field  of  invention  against  competition 
and  to  nullify  the  purposes  of  the  patent  law.  (C.  A.  D.  C. , 
June  6,  1899.) 

Morris,  J.]     ^-^^Griffin  v.  Swenson,  89  0.  G.,  919. 

14.  Where  an  inventor  interested  a  third  j^arty  to  cooperate 
with  him  in  exi)loiting  and  testing  an  invention  and  procuring 
a  pntent  therefor,  l)ut  without  an}'  steps  whatever  being  taken 
toward  the  object  in  view  beyond  the  mere  determination  to 
have  the  invention  tested  at  some  time.  Held,  that  such  unde- 
veloped intentions  unaccompanied  by  any  action  cannot  be  held 
to  be  due  diligence  on  the  part  of  the  inventor.  */r/. 

15.  Neither  the  delay  that  is  proper  in  one  case  nor  the  dili- 
gence that  is  due  in  the  other  can  in  the  absence  of  any  statu- 
tory limitation  of  time  in  this  regard  l)e  measured  by  any  arbi- 
trary standard.  It  has  been  repeatedly  held  that  the  question 
of  due  diligence  is  one  to  be  determined  in  each  case  by  its  own 
circumstances.  */r/. 

16.  While  less  harm  is  done  and  the  policy  of  the  law  better 
promoted  by  a  rigid  insistence  upon  the  requirement  of  diligence 
than  by  laxity  in  the  encouragement  of  delay,  it  does  not  seem 
that  the  rule  of  diligence  should  be  pushed  to  a  harsh  and  un- 


INTERFERENCES.  1 67 

reasonable  extent.     M'liat   the  law  requires  is  reasonable,  not 
extraordinary,  activity.  ^Id. 

XVI.  Reduction  to  Pr.\ctice. 

{e)  Drawings  and  Models. 

1.  The  contention  that  a  drawing  demonstrating  efficiency 
and  operativeness  is  the  full  etinivalent  of  an  actual  machine 
and  just  as  effectively  embodies  the  adoption  and  perfection  of 
the  invention  cannot  be  sustained  by  anj^  authorit}'.  (Feb.  27, 
1899.) 

DuELL,  C]     Kasson  v.  Hetherington,  88  0.  G.  1157. 

2.  That  a  drawing  or  a  model  cannot  be  used  as  showing  a 
completion  of  invention  seems  to  be  too  well  settled  for  argu- 
ment. (Stephenson  v.  Goodell,  9  0.  G.  1195  ;  Green  v.  Hall, 
46  0.  G.  1115,  and  47  0.  G.  1631  ;  Hunter  v.  Stykeman,  85  0. 
G.  610  ;  Mason  v.  Hepburn,  84  0.  G.  147  ;  Telephone  Cases, 
126  U.  S.  535  ;  Porter  v.  Louden,  73  O.  G.  1551  ;  Croskey  v. 
Atterbury,  76  0.  G.  1613,  cited.)  Id. 

XVII.  Reinstatement  or  Reopening  of. 

1.  Motions  to  reopen  interferences  must  be  heard  and  decided 
in  the  first  instance  by  the  examiner  of  interferences,  and  the 
only  question  to  be  determined  iij^on  a  petition  to  reopen  to  take 
additional  testimony,  which,  with  an  additional  showing  of 
facts,  was  in  effect  a  renewal  of  a  similar  petition  which  was  de- 
nied for  insufficient  showing  of  diligence,  is  as  to  whether  the 
jurisdiction  of  the  examiner  of  interferences  should  be  restored 
for  the  purpose  of  considering  the  matter  of  reopening.  (Apr. 
19,  1899.) 

Greeley,   A.   C]     Joljes  r.    Roberts  v.  Hauss,   66   I\IS.    Dec. 
471. 

2.  Where  the  showing  set  forth  facts  indicating  diligence  on 
the  part  of  the  petitioner,  both  in  discovering  new  evidence  and 
in  bringing  the  petition  to  reopen,  Held,  to  })e  sufficient  to  war- 
rant the  transmission  of  the  case  to  the  examiner  of  interferences 
for  the  purpose  of  deciding  the  question  /(/. 

XVIII.  Service  of  Notice. 

].  Where  notices  to  a  party  to  file  his  j)reliminary  statement 
had  been  sent  and  the  preliminary  statement  was  not  filed,  but 


168  INTERFERE^'CES. 

the  Office  was  notified  tliat  the  party  was  dead,  the  examiner  of 
interferences  instructed  to  send  new  notices  setting  a  new  date 
for  the  fihng  of  the  preliminary  statement,  and  that  date  should 
be  set  so  as  to  give  an  opportunity  for  the  apj)ointment  of  an 
administrator,  notices  being  sent  to  the  heirs  of  the  deceased. 
(Julys,  1899.) 

DuELL,  C]      Handley  v.  Bradley,  89  0.  G.  522. 

2.  The  examiner  of  interferences  having  called  the  Commis- 
sioner's attention  to  the  fact  that  no  response  had  been  made 
to  the  notices  sent  under  the  order  of  the  Con)missioner  in  the 
case  of  Handley  v.  Bradley,  of  July  3,  1899,  the  examiner  is 
directed  to  set  times  for  taking  testimony  and  to  send  notices 
thereof  to  the  assignee  of  the  part  interest  of  the  deceased  at  the 
addresses  which  have  been  furnished  to  the  Office.  If  the  other 
party  closes  his  testimony  and  there  is  no  testimony  presented 
on  behalf  of  the  deceased,  the  examiner  of  interferences  shall,  if 
proper  motion  is  made,  consider  the  testimony  offered  and  enter 
judgment  in  the  case  accordingly.      (Sept.  25,  1899.) 

DuELL,  C]     Handley  v.  Bradley,  89  0.  G.  524. 
XIX.   Suspension. 

1.  Under  rule  126  a  suspension  of  proceedings  for  the  consid- 
eration of  an  alleged  statutory  bar  is  not  granted  as  a  matter  of 
right  on  the  part  of  one  of  the  parties,  but  merely  in  the  discre- 
tion of  the  Commissioner  in  a  [)roper  case  in  order  to  terminate 
needless  contests.      (Dec.  16,  1898.) 

Greeley,  A.  C]     Shiels  v.  Lawrence  et  al,  87  0.  G.  180. 

2.  Even  wdiere  the  Commissioner's  attention  is  called  to  an 
alleged  statutory  bar  as  provided  in  the  rule,  the  interference 
will  not  be  suspended  for  a  determination  thereof  unless  sub- 
stantial justice  demands  it.  Id. 

3.  When  the  only  right  which  S.  had  to  the  continuance  of 
the  contest  was  to  determine  the  question  of  originality  of  inven- 
tion, he  will  not  be  permitted  to  turn  the  contest  off  upon  some 
other  question,  and  thus  possibly  avoid  a  decision  on  the  only 
question  which  he  really  has  the  right  to  contest.  Id. 

4.  Where  it  appeared  that  a  statutory  bar  of  two  years'  pub- 
lic use  existed,  which  would  prevent  the  issue  of  a  patent  to  A, 


INTERFERENCES.  1 69 

Held,  that  as  no  testimony  had  been  taken  by  cither  i)arty  the 
interference  should  be  suspended  and  the  statutory  bar  deter- 
mined. Thomson  et  al.  v.  Hisley,  (Hi  0.  G.  159!);  Tyler  v. 
Arnold,  84  0.  G.  1584,  and  Howard  v.  Hey,  86  0.  G.  184,  dis- 
tinguished from  the  present  case.  (June  26,  1899.) 
DuELL,  C]     Sanford  INlills  v.  Aveyard,  88  0.  G.  385. 

5.  To  refuse  to  institute  public-use  proceedings  at  this  time 
and  to  refuse  to  suspend  the  interference  would  be  a  hardship 
and  would  add  unnecessarily  to   the  expense  of  both   i)arties. 

Id. 

6.  It  being  a  well-settled  rule  of  law  that  it  is  within  the 
sound  discretion  of  a  court  to  stay  proceedings  when  there  is 
another  action  between  the  same  parties  involving  the  same 
issues  1  ending  m  a  court  of  a  sister  State  or  in  a  court  of  the 
United  States,  by  analogy  the  facts  herein  set  forth  w^arrant  stay- 
ing the  interference  proceedings  in  this  case  and  the  institution 
of  public-use  proceedings.  /(/. 

7.  As  rule  126  provides  for  the  suspension  of  an  interference 
proceeding  by  the  Commissioner  before  judgment  on  priority  to 
determine  a  statutory  bar  which  has  been  called  to  his  attention 
by  the  examiner  of  interferences  or  the  examiners-in-chief,  there 
is  no  reason  for  delaying  the  institution  of  public-use  proceed- 
ings in  this  case  until  after  one  of  these  tribunals  has  called  the 
commissioner's  attention  to  the  existence  of  the  statutory  bar. 

Id. 

8.  Protestants  having  made  out  &.  prima  facie  case  against  the 
grant  of  a  patent  to  A,  formal  proceedings  to  establish  legally 
the  alleged  facts  set  forth  by  protestants  will  be  instituted  upon 
certain  conditions  to  be  complied  \vith.  Id. 

XX.  Testimony. 

(a)  In  General. 

1.  The  fact  that  negotiations  were  pending  between  the  parties 
looking  to  a  settlement  of  the  controversy  without  prosecuting 
the  interference  cannot  be  received  as  a  valid  excuse  for  the  fail- 
ure to  take  testimony.      (Jan.  17,  1899.) 

Greeley,  A.  C.]      Igleheart  Bros.  v.  Houston,  Meeks  &  Co.,  86 
0.  G.  631. 

2.  Where  testimony  was  introduced  to  prove  things  alleged  to 


170  INTERFERENCES. 

have  been  done  prior  to  tlie  dates  set  uj)  in  a  preliminary  state- 
ment, Held,  that  such  testimony  cannot  l)e  regarded  as  having 
any  weight.     (C.  A.  D.  C,  Feb.  8,  1899.) 
Morris,  J.]     *Bader  r.  Vajen,  87  0.  G.  1235. 

XX.  Testimony. 

(6)  Time  for  Taking. 
When  a  prehminary  statement  is  amended  to  conform  to  the 
evidence  after  decision  on  priority,  Held,  that  new  times  for 
taking  testimony  should  be  set,  so  as  to  give  the  opposing  party 
an  opportunity  to  cross-examine  the  witnesses  in  regard  to  the 
matter.     (July  7,  1899.  ) 

Greeley,  A.  C]      Richardson  r.  Humphrey,  88.  0.  G.  2241, 

XX.  Testimony. 

(c)   Interested  Parties. 

1.  If  the  testimony  of  an  interferent,  upon  whom  rests  tlie 
burden  of  proof,  is  entirely  clear  and  satisfactory,  it  is  well  set- 
tled that  it  would  not  be  sufhcient  to  establish  his  case  without 
corroboration.      (March  25,  1899.) 

Greeley,  A.  C.]     Bragger  r.  Rhind,  66  MS.  Dec,  409. 

2.  "While  it  is  true  that  the  fact  of  conception  by  an  inventor 
for  the  purpose  of  estalilishing  ]iriority  cannot  be  proved  by  his 
mere  allegation  or  his  unsupported  testimony,  where  there  has 
been  no  disclosure  to  others  or  embodiment  of  invention  in 
some  clearly  perceptilile  form,  such  as  drawings  or  models,  with 
sufficient  proof  of  identity  in  ])oint  of  time,  it  does  not  follow 
from  this  princi]ile  that  the  party  upon  whom  is  cast  the  onus 
of  proving  the  fact  of  priority  of  invention  is  an  incompetent 
witness  to  testify  in  his  own  behalf  as  to  the  facts  of  priority. 
(C.  A.  I).  C.  Jan.  10,  1899.) 

Alvey,  J.     *Wins]ow  v.  Austin,  86  0.  G.  2171. 

3.  Where  V  swore  to  the  disclosure  which  evidences  his  al- 
leged conception  of  the  invention  and  B  denied  that  disclosure, 
which  is  not  claimed  to  have  been  made  to  any  other  person 
than  himself.  Held,  that  the  utmost  that  can  be  said  in  favor  of 
V  is  that  the  testimony  is  balanced.  (C.  A.  D.  C.  Feb.  8, 
1899.) 

Morris,  J.]     ^^Bader  v.  Vajen,  87  0.  G.  1235. 


INTERFERENCES.  171 

XX.  Testimony. 

(f)  Iirelevant. 

1.  H's  testimony  in  rebuttal  consisted  of  that  of  an  expert  on 
the  question  of  non-])atental)ilit3'  of  tlie  issue.  A  objected  to 
this  testinnony  during  tlie  taking  thereof  and  later  made  a  mo- 
tion to  strike  it  out  on  the  ground  that  it  was  not  pro])er  rebut- 
tal testimony.  H  contends  that  as  the  word  "rebuttal"  was 
not  used  in  the  objection  on  the  record  it  is  now  too  late  to 
move  to  strike  out  on  this  ground.  Held,  that  although  A  did 
not  raise  the  specific  objection  to  the  testimony,  yet  the  motion 
is  considered  and  the  testimony  being  outside  of  the  interference 
question  is  imj^-oper  rebuttal  and  should  be  stricken  out. 
(June  20,  1899.) 

DuELL,  C]     Huber  v.  Aiken,  88  0.  G.  1525. 

2.  Testimony  should  not  be  taken  in  an  interference  proceeding 
merely  for  the  purpose  of  showing  that  the  issue  of  an  interfer- 
ence is  anticipated  or  devoid  of  patentability  in  view  of  the 
prior  art  when  the  opposing  party  objects  to  such  testimony. 
Testimony  should  be  confined  to  the  question  of  priority  of  in- 
vention.     (Straus  r.  Cook,  43  MS.  Dec.  65,  cited.)  Id. 

XXI.  Vacating  -Judgment. 

1.  The  discovery  of  new  evidence  in  one  interference  is  no 
reason  for  the  vacation  of  the  judgment  on  priority  and  setting 
new  times  for  taking  testimony  in  another  merely  because  in  the 
moving  party's  opinion  the  interferences  are  closely  related. 
(Jan.  17,  1899.) 

Greeley,  A.  C]      Igleheart  Bros.  v.  Houston,  Meeks  &  Co.,  86 
0.  G.  681. 

2.  A  party  who  voluntarily  fails  to  prosecute  one  interference 
because  in  his  o])inion  he  cannot  prevail  in  another  closely-re- 
lated interference,  is  bound  by  his  election  and  cannot  afterward 
obtain  a  vacation  of  judgment  merely  because  he  finds  himself 
mistaken  as  to  that  other  interference.  Id. 

3.  When  a  prhna  facie  case  of  newly-discovered  evidences  and 
reasonable  diligence  was  made  out  after  decision  by  the  exam- 
iner of  interferences  on  the  question  of  priority  and  after  ap])eal 
had  been  taken  from  his  decision  his  jurisdiction  Avas  restored 


172  INTERFERING    PATENTS. 

for  the  consideration   of  a  motion   to  vacate  the  decision  on 
priority  and  set  new  times  for  taking  testimony.      (Jan.    17, 
1899. ) 
Greeley,  A.  C]     Igleheart  Bros.  v.  Land  et  ah,  86  0.  G.  632. 

4.  The  question  as  to  whether  the  showing  warrants  the  vaca- 
tion of  the  judgment  and  setting  new  times  for  taking  testimony 
is  not  up  for  decision,  the  sole  question  being  whether  it  warrants 
the  transmission  of  the  case  to  the  examiner  of  interferences  for 
a  determination  of  that  question.  Id. 

5.  Tlie  jurisdiction  of  the  examiner  of  interferences  will  not 
be  restored  for  the  consideration  of  a  motion  to  vacate  the  de- 
cision on  j^riority  and  set  new  times  for  taking  testimony  on  the 
ground  of  newly-discovered  evidence  where  it  clearly  appears 
that  the  moving  party  did  not  use  reasonable  diligence  either  in 
discovering  the  evidence  or  in  bringing  the  motion.  (Jan.  24, 
1899.) 

Greeley,  A.  C]     Jobes  v.  Roberts  v.  Hauss,  86  0.  G.  1805. 

6.  AVhen  a  party  relies  on  his  own  memory  and  fails  to  con- 
sult parties  whom  he  know^s  to  be  equally  familiar  with  the  facts 
of  the  case,  Held,  to  show  a  lack  of  diligence  on  his  part  in  dis- 
covering the  evidence  which  those  parties  may  be  able  to  pro- 
duce. Id. 

Interfering  Patents. 

I.  To  THE  Same  Inventor. 
II.   To  Different  Inventors. 
I.  To  THE  Same  Inventor. 

1.  For  a  long  time  after  Rubber  Co.  v.  Goodyear,  9  Wall. 
788,  796,  in  connection  with  Suffolk  Co.  v.  Hay  den,  3  Wall. 
315,  378,  if  not  before  the  date  of  the  expressions  found  in  those 
cases,  it  was  understood  that  an  inventor  might  lawfully  divide 
his  invention  so  far  as  to  take  out  independent  patents  for  his 
machine,  his  process,  and  his  product,  provided,  the  applications 
were  all  pending  in  the  Patent  Office  before  either  patent  issued, 
or  were  pending  otherwise  under  such  circumstances  as  to  save 
him  from  the  abandonment  implied  in  taking  out  a  patent  for 
less  than  his  whole  invention.  This  statement  is  sustained  his- 
torically by  Judge  Colt  in  Eastern  Paper-Bag  Co.  v.  Standard 


INTERFERING    PATENTS.  173 

Paper-Bag  Co.,  30  Fed.  Rep.  63;  41  0.  (J.  231;  C.  D.  1887, 
althougli  some  of  the  dicfn  in  tliat  case  as  to  al)an(lornnent  may 
need  modification  in  view  of  later  decisions  of  the  Supreme 
Court — among  the  rest,  Underwood  r.  Gerber,  149  U.  S.  224, 
230;  13  Sup.  Ct.  854;  Deering  v.  Harvester  Wks,  155  U.  S. 
28G,  21)6;  15  Sup.  Ct.  118;  60  0.  G.  1641;  C.  D.  1894.  The 
pro})osition  that  independent  jtatents  may  certainly  lie  taken  for 
the  machine,  the  art,  and  the  product  involved  in  the  same 
fundamental  invention,  when  applications  therefor  are  })ending 
at  the  same  time  in  the  Patent  Office,  has  l)een  very  mucli  em- 
barrassed by  the  exi)ressions  found  in  Lock  Co.  r.  INIosler,  127 
U.  S.  354,  361;  8  Sup.  Ct.  1148;  43  0.  G.  1115;  C.  D.  1888,  and 
in  Underwood  v.  Gerber,  ubi  svpra.  In  each  of  those  cases  it 
appeared  that  the  various  applications  were  filed  at  difT(>rent 
times  in  the  Patent  Office;  yet,  although  all  were  pending  before 
any  patent  issued,  only  the  earlier  patent  was  sustained.  (C.  C, 
D.  Me.     July  30,  1898.) 

Putnam,  J.]     *Simonds  Rolling  Mach.   Co.   v.   Hathorn   Mfg. 
Co.  etaJ.,  90  Fed.  Rep.  201. 

2.  One  cannot  lawfully  have  two  patents  for  the  same  inven- 
tion; when  once  the  invention  has  been  used  as  consideration  of 
a  grant,  its  value  for  that  purpose  is  spent,  and  there  is  nothing 
in  it  on  which  a  second  grant  can  be  supported.  And  the  rule 
holds  good  though  the  scope  of  the  patents  may  be  different. 
A  patentee  cannot  extract  an  essential  element  of  his  invention 
from  his  former  patent,  without  which  such  patent  woidd  not 
have  l)een  granted,  and  make  it  the  subject  of  a  second  patent. 
It  is  not  necessary  to  the  rule  that  the  patents  should  be  for  co- 
extensive inventions  or  tliat  the  subject  matter  should  be  tech- 
nically the  same.  The  rule  rests  upon  the  broad  and  oV)vious 
ground  that,  if  the  second  patent  is  for  an  invention  that  was 
necessary  to  the  use  of  the  invention  first  patented,  it  camiot  be 
sustained.     (C.  C.  A.,  6th  Cir.     Dec.  5,  1898.) 

Severens,  J.]     *  Palmer  Pneumatic  Tire  Co.  v.  Lozier,  90  Fed. 
Rep.  732. 

3.  The  conception  of  a  mechanism  capable  merely  of  produc- 
ing motion  in  a  predetermined  form,  and  the  conception  of  this 
mechanism  combined,  with  other  elements,  in  a  machine  pro- 


174  JUDICIAL    NOTICE. 

ducing  work  theretofore  done  only  by  hand  are  distinct,  and 
where  an  inventor  has  made  such  distinct  conceptions  the  sub- 
jects matter  of  separate  patents,  particularly  Avhere  the  "me- 
chanical movement"  is  capable  of  use  in  other  machines,  he 
should  not  be  deprived  of  the  protection  of  letters  patent  for 
that  which  he  regards  as  his  chief  invention,  connnercially 
considered.  (C.  C.  A.,  1st  Cir.  Mar.  16,  1899.) 
Beown,  J.]  *  Palmer  v.  John  E.  Brown  Mfg.  Co.,  92  Fed. 
Rep.  925. 

11.  Different  Inventors. 

1.  In  suits  brought  under  R.  S.  §  4918  to  obtain  an  adjudi- 
cation of  priority  of  invention  covered  by  two  interfering  pat- 
ents, the  court  is  not  confined  to  the  single  determination  of 
priority,  with  the  consequent  determination  that  the  patent  to 
the  later  inventor  is  void.  On  the  contrary,  the  court  is  bound 
to  determine  whether  upon  identifying  the  subject-matter  of  the 
interfering  patents,  the  matter  stated  therein  is  patentable.  If 
upon  inspection  of  the  complainant's  patent  or  in  the  course  of 
the  investigation  it  must  make  to  determine  the  nature  of  the 
alleged  invention,  the  court  should  see  that  the  patents  are  void 
for  lack  of  patentable  subject-matter,  it  ought  not  to  proceed  to 
an  inquiry  as  to  who  first  discovered  the  thing  which  the  court 
finds  to  be  null,  and  decree  thereon,  but  should  dismiss  the 
bill,  and  deny  relief  to  either  party.  (C.  C.  A.,  6th  Cir.  Dec. 
5,  1898.) 

Severens,  J.]     *  Palmer  Pneumatic  Tire  Co.  v.  Lozier,  90  Fed. 
Rep.  732. 

2.  R.  S.  §  4918  necessarily  involves  the  presence  of  patent- 
able invention  as  the  subject-matter  of  the  litigation,  and  the 
court  cannot  close  the  door  to  all  inquiry  as  to  whether  such 
subject-matter  for  controversy  exists.  The  court  is,  by  the 
terms  of  the  statute,  empowered,  as  a  sequel  to  its  inquiry,  to 
determine  either  of  the  patents  void  in  whole  or  in  part.   *M 

Judicial  Kotice. 

1.  Where  a  certified  copy  of  an  application  was  introduced  in 
evidence,  but  no  proof  was  made  as  to  the  application  having 
been  allowed.  Held,  that  as  the  commissioner  had  examined  the 


JUDICIAL    NOTICE.  175 

files  of  his  office  and  found  that  the  said  application  had  been 
formally  allowed  and  had  considered  the  fact  in  making  his  de- 
cision,  it  was  sufficient  proof  that    the  application   had  been 
allowed.      (C.  A.  D.  C,  Jan.  8,  1899.) 
Shepard,  J.]     *Cain  v.  Park,  86  0.  G.  797. 

2.  While  as  a  general  rule  nothing  is  to  be  considered  as  evi- 
dence in  an  interference  case  unless  introduced  into  the  record 
before  final  submission,  yet  neither  the  general  purpose  nor  the 
efficiency  of  the  rule  is  impaired  by  the  creation  of  an  excep- 
tion thereto  in  favor  of  the  consideration  of  a  relevant  and 
material  fact  shown  by  a  record  in  the  Patent  Office  entered  in 
the  regular  course  of  proceedings  therein.  */c/. 

3.  While  the  allowance  of  an  application  is  not  evidence  for 
the  interested  party  in  the  ordinar}^  sense,  yet  it  is  a  record  of 
an  official  action  in  the  Office  and  under  the  authority  of  the 
commissioner  of  which  the  Court  of  Appeals  may  take  notice  in 
order  that  justice  may  be  done.  */f/. 

4.  In  passing  upon  an  application  for  a  patent  the  commis- 
sioner may  go  outside  of  the  record  and  take  notice  of  the  offi- 
cial entries  made  in  his  own  office  and  under  his  own  supervis- 
ion in  order  that  justice  may  be  done  to  parties.  */(/. 

5.  For  the  purpose  of  ascertaining  the  state  of  the  art  when 
it  concerns  a  matter  of  general  interest  the  court  may  take  judi- 
cial notice  of  what  is  disclosed  by  its  own  records  in  a  previous 
case  involving  an  invention  appertaining  to  the  same  art.  (C. 
C.  A.,  IstCir.     June  1,  1899.) 

Putnam,  J.]     *Cushman  Paper  Box  Mach.   Co.   r.  Goddard  ei 
a/.,  88  0.  G.  2410;  95  Fed.  Rep.  664. 

6.  The  court  may  take  judicial  notice  that  the  alleged  inven- 
tion is  nothing  more  than  the  application  to  a  rope  or  cord  of  the 
devices  from  time  inmiemorial  applied  to  garters,  suspenders, 
curtain  cords,  and  tag  strings.  (C.  C,  tS.  D.  N.  Y.  Aug.  9, 
1899.) 

TowNSEND,  J.]     *  Covert  r.   Travers  Bros.   Co.,   96  Fed.  Rep. 
568. 


176  JUEISDICTION. 

Jurisdiction. 

I.    COMMISSIOXER  OF  PATENTS. 

II.  Secretary  of  the  Interior. 

III.   Federal  Courts. 

(a)  Court  of  Appeah^  District  of  Colambia. 

(b)  Circuit  Courts. 
I.   Commissioner  of  Patents. 

1.  As  under  the  Constitution  Congress  has  power  to  make 
laws  which  shall  he  necessary  and  projier  for  carrying  out  that 
express  power  of  the  Constitution  in  regard  to  protecting  patents, 
it  folloAvs  that  Congress  may  provide  such  instrumentalities  in 
relation  to  the  matter  as  in  its  judgment  will  he  hest  calculated 
to  effect  that  ol)ject.  (Sup.  Ct.  U.  S.  Jan.  23,  1899.) 
Fuller,  C.  J.]     *U.  S.   ex  rel.   Bernardin  v.   Duell,   Comr.   of 

Pats.,  86  0.  G.  995. 

2.  As  one  of  the  instrumentalities  designated  by  Congress  in 
execution  of  the  power  granted  the  office  of  Commissioner  of 
Patents  Avas  created,  and  though  he  is  an  executive  officer,  mat- 
ters in  the  disposal  of  which  he  exercises  functions  judicial  in 
their  nature  may  properly  be  brought  within  the  cognizance  of 
the  courts.  *^"^- 

3.  In  deciding  Avhether  or  not  a  patent  shall  issue  the  Com- 
missioner acts  on  evidence,  finds  facts,  applies  the  law,  and 
decides  questions  affecting  not  only  i)uhlic  but  private  interests, 
and  so  as  to  reissues  or  extensions  or  interferences  between  con- 
testing claimants.  In  all  this  he  exercises  judicial  functions. 
(Butterworth  v.  Hoe,  29  0.  G.  615;  112  U.  S.  50,  cited.   *M 

4.  While  the  Commissioner  of  Patents  is  an  executive  officer 
and  subject  in  administrative  or  executive  matters  to  the  super- 
vision of  the  Secretary  of  the  Interior,  his  actions  in  deciding 
patent  cases  are  essentially  judicial  in  their  nature  and  not  sub- 
ject to  review^  by  the  executive  head,  an  appeal  to  the  courts 
having  been  provided  for.  (Butterworth  r.  Hoe,  29  0.  G.  615; 
112  IT.  S.  50,  cited.)  */f/. 

5.  The  different  statutes  show  that  in  the  gradual  develop- 
ment of  the  policy  of  Congress  in  dealing  with  the  subject  of 
granting  patents  the  recognition  of  the  judicial  character  of  the 
questions  involved  became  more  and  more  pronounced.     */cZ. 


JUEISDICTION.  177 

6.  Althougli  nilc  124  jti-ovidcs  that  from  a  derision  of  the 
Primary  Exauiiner  afiirmiiig  the  patentahility  of  a  claim  or  the 
right  to  make  it  no  appeal  can  be  taken,  and  rule  126  provides 
that  the  lower  tribunals  may  call  the  Commissioner's  attention 
to  matter  whicli  amounts  to  a  statutory  bar  to  the  grant  of  a 
patent,  Held,  that  under  the  supervisory  power  confiM'red  upon 
the  Commissioner  by  statute  he  may  review  a  favoial)le  decision 
of  the  Primary  Examiner  on  the  (question  of  patentability,  not- 
withstanding rule  124,  and  even  when  his  attention  has  not  been 
called  to  the  matter,  as  provided  for  by  rule  126.  (Oct.  16,  1899. ) 
DuELL,  C]     Anderson  &  Dyer  r.  Lowry,  89  0.  G.,  1861. 

7.  As  the  statute  has  imposed  upon  the  Commissioner  of 
Patents  the  superintending  or  performing  of  all  duties  relating 
to  the  granting  and  issuing  of  patents,  any  rule  that  would  pre- 
vent the  Commissioner  from  exei-cising  such  power  would  be 
invalid.  Id. 

8.  It  being  impossible  for  the  Commissioner  to  '^ perform  a]\ 
duties  respecting  the  granting  and  issuing  of  patents,"  that  fact 
does  not  relieve  him  from  the  duty  of  superintendence,  and  he 
has  no. power  to  make  a  rule  which  would  prevent  him  from 
performing  his  statutory  duties.  Id. 

9.  Under  the  proper  construction  rules  124  and  126  do  not 
deprive  the  Commissioner  of  his  supervisory  power,  and  it 
would  be  a  very  anomalous  condition  of  affairs  if  the  exam- 
iners, who  are  appointed  upon  the  nomination  of  the  Commis- 
sioner, are  above  his  superintendence.  If  he  has  no  power  to 
superintend  and  revise  the  action  of  the  examiners,  he  could 
not  superintend  the  granting  and  issuing  of  patents.  Id. 

10.  The  Commissioner  should  not  refuse  in  a  proper  case  to 
exercise  his  supervisory  power,  and  it  would  be  nonfeasance  for 
him  to  refuse.  The  courts  which  have  appellate  jurisdiction 
over  the  Patent  Oftice  have  more  than  once  held  that  the  Com- 
missioner may  refuse  patents,  even  after  favorable  decision  by 
subordinates,  under  his  general  supervisory  power.  Id. 

11.  The  reserve  supervisory  power  of  the  Commissioner 
should  be  used  in  the  treatment  of  cases  of  the  class  to  which 
the  present  one  belongs  only  where  some  extraordinary  reason 
for  such  action  is  disclosed.  Id. 

12 


178  JURISDICTION. 

II.  Secretary  of  the  Interior. 

1.  The  general  powers  of  discretion  and  superintendence  given 
by  law  to  the  Secretary  of  the  Interior  over  the  several  Bureaus 
of  the  Interior  Department  do  not  have  the  same  application  to 
the  Patent  Office  as  to  the  General  Land  Office,  the  Pension 
Office,  and  the  Indian  Office  for  the  reason  that  Congress  in  the 
one  case  has  provided  another  and  exclusive  manner  of  correct- 
ing errors  in  the  decisions  of  the  Commissioner,  while  in  land, 
pension,  and  Indian  matters  no  such  other  or  exclusive  remedy 
is  provided.  (Feb.  20,  1899.)  Opinion  of  the  Asst.  Atty.  Gen. 
for  the  Department  of  the  Interioi'.  fPiwle  r.  Avery,  87  0.  G. 
357. 

2.  The  decision  of  the  Commissioner  of  Patents  in  placing  the 
burden  of  proof  in  an  interference  case  is  not  the  act  of  an  ad- 
ministrative officer  and  purely  ministerial  in  its  nature,  but  is 
the  act  of  a  judicial  officer,  and  therefore  the  Secretary  of  the 
Interior  is  without  jurisdiction  or  authority  over  the  matter  pre- 
sented to  him  by  appeal.  -fid. 

3.  The  duty  imposed  upon  the  Commissioner  to  determine 
which  of  certain  rules  were  applicable  to  an  interference  and 
upon  whom  the  burden  of  proof  should  be  placed  involved  the 
exercise  of  a  judicial  discretion  and  authority  the  same  as  the 
admission  or  rejection  of  evidence  or  the  making  of  any  other 
interlocutory  ruling,  and  for  that  reason  his  decision  on  this 
question  cannot  be  reviewed  by  the  Secretary  of  the  Interior  on 
appeal  to  him  from  the  decision  of  the  Commissioner.       -fid. 

III.  Federal  Courts. 

(a)  Court  of  Appeals,  Dist.  of  Columbia. 
1.  The  act  of  Congress  approved  February  9,  1893,  which 
gave  the  Court  of  Appeals  of  the  District  of  Columbia  the  power 
to  review  the  decisions  of  the  Commissioner  of  Patents,  is  such 
an  act  as  Congress  was  authorized  to  pass  under  the  Constitu- 
tion, and  in  the  matter  of  such  appeal  no  encroachments  of  the 
judicial  department  of  the  Government  on  the  domain  of  the 
executive  department  are  found  to  justify  the  courts  in  holding 
that  the  act  in  question  is  unconstitutional.  (Sup.  Ct.  U.  S. 
Jan.  28,  1899.) 

Fuller,  C.  J.]     *U.  S.  ex  rel.   Bernardin  v.   Duell,   Com'r.   of 
Pats.,  86  0.  G.  995. 


JURISDICTION.  179' 

2.  Where  appeal  ^vas  tak^n  to  the  Court  of  Appeals  on  the 
ground  that  the  Commissioner  of  Patents  erred  (1)  in  refusing 
to  consider  whether  a  patent  granted  to  one  of  the  parties  to  the 
interference  was  for  the  same  invention  as  that  involved  in  the 
interference  and  if  so  whether  it  is  not  a  statutory  bar  to  the 
grant  of  a  patent  for  said  invention  to  said  party;  (2)  in  holding 
that  this  question  of  a  statutory  bar  was  an  ex  "parte  one  and 
therefore  not  involved  in  the  interference;  (3)  in  declining  to 
consider  Avhether  an  application  as  filed  disclosed  the  invention 
in  controversy,  and  (4)  in  refusing  to  hold  that  the  subject- 
matter  of  the  interference  w'as  inserted  in  one  of  the  applications 
by  amendment  after  the  application  had  been  filed  in  the  Patent 
Office  and  subsequently  to  the  application  filed  by  the  other 
party,  upon  which  his  patent  had  issued,  Held^  that  these  ques- 
tions are  of  a  preliminar}^  nature  and  do  not  arise  for  considera- 
tion by  the  Court  of  Appeals  upon  a  decision  by  the  Commis- 
sioner of  Patents  in  an  interference  case.  (C.  A.  T..  C.  Oct. 
4,  1899.) 

Alvey,  J.]     *Hulett  r.  Long,  89  0.  G,  1141. 

3.  Held,  further,  that  the  mode  of  raising  these  (questions  in 
the  Patent  Office  and  of  their  determination  therein  is  specially 
provided  for  and  prescribed  by  rules  122,  124  and  126  of  the 
rules  of  practice  of  that  office.  Id. 

4.  The  appeal  allowed  to  the  Court  of  Appeals  for  the  Dis- 
trict of  Columbia  by  the  act  of  Congress  of  February  9,  1893, 
in  case  of  interferences,  is  for  the  purpose  of  having  the  final 
decision  of  the  Commissioner  of  Patents  on  the  question  of 
priority  of  invention  reviewed  and  determined  as  that  question 
is  contemplated  and  provided  for  in  section  4904,  Revised 
Statutes,  and  not  for  the  purpose  of  having  decisions  upon 
collateral  or  interlocutory  questions  reviewed  and  decided.   Id. 

5.  If  all  collateral  and  interlocutory  proceedings  in  the  Patent 
Office  were  subjects  of  appeal  to  the  Court  of  Appeals,  the  pro- 
ceedings for  patents  might  be  made  almost  interminable,  to  say 
nothing  of  the  enormous  costs  that  would  be  incurred  in  prose- 
cuting and  defending  against  such  appeals.  Id. 

6.  Where  it  was  urged  on  appeal  to  the  Court  of  Appeals 
from  the  decision  of  the  commissioner  in  an  interference  case 
that  the  ap})lication  of  one  of  the  parties  as  originally  filed  did 


180  JUEISDICTION. 

not  claim  or  disclose  the  subject-matter  of  the  interference  and 
that  the  matter  of  interference  is  new  matter  put  in  the  case  by 
amendment  since  the  original  application  was  filed,  and  there- 
fore said  party  had  no  right  to  make  the  claim  in  issue,  and 
that  he  could  not  be  given  the  benefit  of  constructive  reduction 
to  practice  as  of  the  date  of  filing  his  original  application.  Held, 
that  this  is  a  preliminary  question  which  has  been  disposed  of 
by  the  tribunals  of  the  office  on  motion  to  dissolve  under  rule 
122.  Id. 

7.  It  is  competent  for  parties  to  an  interference  case  to  show 
in  the  development  of  their  testimony  that  their  devices  are 
different,  and  thereby  preclude  any  adjudication  of  priority 
that  would  prevent  either  one  from  being  protected  in  the 
possession  of  his  own  device.  The  prima  facie  and  ex  parte 
adjudication  of  identity  which  was  the  necessary  prerecpiisite  to 
the  declaration  of  interference  might  be  shown  upon  judicial 
investigation  to  have  been  erroneous,  and  the  interests  of  justice 
would  seem  to  demand  that  it  should  be  open  to  the  parties  to 
make  such  showing,  and  when  such  showing  is  made  as  part  of 
the  cause  and  in  the  ordinary  course  of  the  litigation  upon  the 
merits  it  enters  into  the  substance  of  the  cause  and  is  proper 
to  be  considered  by  the  Court  of  Appeals  on  appeal  from 
the  final  decision  of  the  commissioner.  (C.  A.  D.  C.  Apr.  4, 
1899. ) 

Morris,  J.]     *  Bechman  v.  Wood,  89  0.  G.  2459. 

8.  As  a  general  proposition,  the  power  of  the  Court  of  Appeals 
in  interference  cases  is  limited  to  the  determination  of  the  ques- 
tion of  priority  of  invention  as  between  the  parties  to  the  inter- 
ference, and  neither  the  question  of  patentability  of  the  invention 
nor  the  propriety  of  the  declaration  of  interference  is  open  to 
consideration.      (C.  A.  D.  C,  Dec.  6,  1899.) 

Morris,  J.]     *  Bechman  v.  Wood,  89  0.  G.  2462. 

III.   Federal  Courts. 

(h)   Circuit  Courts. 

1.  Having  obtained  jurisdiction  of  a  suit  in  equity,  when 
brought,  the  court  does  not  lose  such  jurisdiction  merely  because 
by  reason  of  subsequent  events  the  right  to  relief  by  injunction 


LABEL?.  181 

ma}^  have  been  lost.      The  court  ^vi]l   liold   llic  cnusc  until   linal 

disposition.      (C.  C,  S.  D.  N.  Y.,  Mar.  25,  18!)!).) 

Lacombe,   J.]     *  Lalance  tSr  Grosjean  Mfg.    d  al.  v.  Ilabennan 

Mfg.    Co.     Same  r.   ^Nlatthai  ct  al.  98  Fed. 

Kep.  197. 

2.  When  both  complainant  and  defendant  are  corjjorations  of 
the  same  state,  and  therefore  for  purposes  of  jurisdiction,  citi- 
zens of  that  state,  a  federal  court  can  have  no  jurisdiction  of  a 
cause  of  action  arising  out  of  a  contract  of  license  under  a 
patent.  The  failure  to  pay  royalties  upon  which  a  claim  of 
forfeiture  of  license  is  grounded,  is  a  breach  of  contract  cogni- 
zable in  a  court  of  common  law.  That  and  the  cancellation  of 
the  contract  of  license  or  other  equitable  remedy  in  that  regard 
are  matters  justiceable  in  a  state  court,  but  in  the  absence  of 
diverse  citizenshij^  are  clearly  outside  the  jurisdiction  of  a  fed- 
eral court.      (C.  C,  E.  D.  Penn.  June  27,  1899.) 

Gray.  J.]     *  Standard  Dental  Mfg.  Co.  r.  Nat'l  Tooth  Co.,  95 
Fed.  Rep.  291. 

3.  The  allegation  in  a  bill  that  the  defendant  corporation  was 
"  organized  under  and  pursuant  to  the  laws  of  the  state  of  New 
Jersey"  is  an  affirmative  statement  that  it  is  a  citizen  of  New 
Jersey,  and  therefore  sufficient  to  confer  jurisdiction  upon  a 
federal  court,  inasmuch  as  the  complainant  is  a  resident  of 
another  state.  (C.  C,  S.  D.  Ohio,  W.  D.  July  31,  1899.) 
Thompson,  J.]  *  Blocked  al.  v.  Standard  Distilling  &  Distri- 
buting Co.,  95  Fed.  Rep.  978. 

liabels. 

1.  Where  the  Examiner  refused  to  accept  api)lication  papers 
signed  by  the  attorney  for  applicant  on  the  ground  that  there 
is  no  provision  in  the  copyright  law  which  permits  the  applica- 
tion to  be  signed  l)v  any  other  than  the  pro])rietor  or  owner  of 
a  label.  Held,  as  that  there  is  no  provision  in  the  copyright  law 
that  requires  an  application  to  be  signed  by  the  proprietor,  and 
as  it  has  been  the  uniform  practice  of  this  Office  and  the  Libra- 
rian of  Congress  to  register  for  an  author,  designer,  etc.,  books, 
etc.,  upon  an  application  made  by  his  agent  or  attorney  the 
application  should  be  accepted.  (Oct.  29,  1898.) 
DuELL,  C]     E.V parte  McLoughlin  Bros.,  86  0.  G.  1633. 


^182  LICENSE. 

2.  Where  the  Examiner  refused  to  accept  application  papers 
for  registratioTi  of  a  label  which  were  signed  by  the  attorney  for 
applicant  on  the  ground  that  there  was  no  written  power  of  at- 
torney, Held,  that  as  it  has  been  the  practice  to  receive  applica- 
tions so  signed  without  a  written  power  the  application  should 

;be  received.      (Blake  et  al.  r.  Allen  &  Co.,  56  F.  R. ,  764,  cited.) 

Id. 

3.  Where  the  Examiner  required  that  as  the  forn)s  in  the 
Rules  of  Practice  of  the  Patent  Office  relating  to  the  registration 

,  of  prints  and  labels  provided  for  the  signing  of  the  application 
by  the  owner  or  proprietor  of  the  label  these  forms  should  be 
followed,  Held,  that  the  forms  in  the  Print  and  Label  Rules  are 
merely  suggestive  and  it  is  not  mandatory  on  an  applicant  that 
he  should  follow  them.  Id. 

liiceiise. 

I.   In  General. 
II.   Implied. 
III.  To  Make,  Use  and  Sell. 
I.   In  General. 

1.  Whei'e  an  applicant  in  certain  instruments  assigned  his 
right,  title  and  interest  in  an  invention,  retaining  for  himself 
the  exclusive  right  to  emplo}'  the  invention  in  the  manufacture 
of  a  certain  class  of  m.achines,  Held,  that  such  instruments  do 
not  conve}^  the  entire  interest  in  the  invention  or  an  undivided 
part  thereof;  and  they  are  construed  to  be  nothing  more  than 
licenses.  (Gaylor  r.  Wilder,  10  How.,  477,  and  Waterman  v. 
Mackenzie,  54  0.  G.  1562,  cited.     Oct.  5,  1899.) 

DuELL,  C]     Ex  parte  Rosback,  89  0.  G.  705. 

2.  Held,  further,  that  under  the  authorities  and  the  settled 
practice  of  the  office,  the  office  was  justified  in  construing  such 
instruments  as  not  conveying  such  an  interest  in  the  invention 
and  the  patent  as  would  authorize  the  commissioner  under  the 
provisions  of  rule  26  to  issue  the  patent  to  the  party  named  as 
assignee.  Id. 

3.  A  license  does  not  become  void  ipso  facto  by  failure  to  pay 
stipulated   royalties;  even  though  a  provision  is  made  in  the 

.contract  of  license  that  such  failure  to  pay  shall  work  forfeiture 


LICENSE.  183 

of  such  license,  the  licensee  has  a  right  to  be  heard  as  to  the 
facts  upon  which  such  forfeiture  or  annulment  is  made  to  de- 
pend. The  license  would  remain  operative  and  pleadable  and 
therefore  defeat  an  action  for  infringement,  until  rescinded  by 
a  court  of  equity.  The  obvious  course  of  procedure  would  be 
either  to  sue  for  damages  for  non-payment  of  royalties,  or  by 
bill  in  equity  seek  the  rescission  of  the  contract  of  license,  and 
that  being  obtained,  to  pursue  the  licensee  in  a  federal  court 
for  infringement,  and  not  by  a  suit  which  has  the  dual  object 
of  rescinding  the  contract  and  obtaining  the  remedy  for  in- 
fringement at  the  same  time  in  the  same  bill.  C.  C. ,  E.  D. 
Penn.,  June  27,  1899.) 

Gray,  .J.]     *  Standard  Dental  Mfg.  Co.  v.  Nat'l  Tooth  Co.,  95 
Fed.  Rep.  291. 

4.  A  mere  breach  of  covenant  (if  such  breach  be  establislied) 
does  not,  ipso  facto,  annul  a  license.  In  order  to  annul  it  there 
must  be  some  proper  proceeding  and  a  rescission  in  equity. 
(C.  C,  E.  D.  Penn.,  June  19,  1899.) 

Gray,  J.]     *Hanifen  v.  Lupton  et  ciL,  95  Fed  Rep.  465. 

5.  Where,  under  a  license,  the  licensee  was  empowered  to 
deal  in,  import,  use  and  sell  certain  articles  covered  by  patent 
at  certain  specified  royalties,  and  he  covenanted  not  to  deal  in, 
handle,  take  orders  for,  etc.,  sucb  articles  so  patented  made  by 
any  person  in  this  country  who  is  not  licensed  under  the  pat- 
ent ^^  unless  he  pays  the  ro3'alties  thereon  himself."  Held,  that 
it  is  not  important  whether  the  last  clause  is  treated  as  an 
estoppel  upon  the  licensor  to  treat  as  infringers  those  manufac- 
turers with  whom  the  licensee  dealt  in  accordance  with  the 
license,  or  as  an  implication  of  license  to  such  manufacturers  to 
make  and  sell  their  product  through  the  licensee,  for  the  effect 
of  it  is,  as  to  the  articles  thus  dealt  in,  that  the  patent  monopoly 
was  waived.  */(/. 

6.  Where  a  license  under  a  patent  contained  the  provision  : 
"This  royalty  shall  be  paid  only  upon  said  sales  and  said  busi- 
ness done  by  the  part}'  of  the  second  part,  the  orders  for  which 
are  taken  subsequent  to  April  1,  1896;  and  at  the  expiration  or 
termination  in  any  wise  of  the  agreement,  the  said  royalties 
shall  be  paid  on  all  orders  taken  prior  to  such  expiration  or  ter- 


184  LICENSE. 

mination,  whether  the  goods  are  dehvered  prior  thereto  or  sub- 
sequent thereto,"  the  impHcation  is  very  strong  that  deliveries 
upon  new  orders  must  cease.  It  was  not  the  intention  of  the 
agreement  that  goods  could  be  accumulated  by  the  licensee  dur- 
ing the  continuance  of  the  license,  and,  although  not  ordered 
before  its  voluntary  cancellation,  could  be  subsequently  sold  in 
competition  with  other  licensees.  Such  sales  made  after  cancel- 
lation are  unauthorized.  (C.  C.  A.,  2d  Cir.  Apr.  4,  1899.) 
Shipman,  J.]  *Pelzer  v.  City  of  Binghampton  et  al.,  95  Fed. 
Rep.  823. 
7.  A  suit  on  a  contract  of  license  under  letters  patent  is  not 
a  suit  arising  under  the  patent  laws.  (C.  C,  N.  D.  111.  N.  D. 
July  27,  1899. ) 

KoHLSAAT,  J.]     *  Perry  v.  Noyes  et  al,  96  Fed.  Rep.  233. 
II.   Implied. 

1.  The  existence  of  an  implied  license  from  an  employ^  to 
his  employer  has  always  been  treated  as  a  mixed  question  of 
law  and  fact,  and  the  determination  of  the  question  in  one  suit 
cannot  make  a  decisive  precedent  for  another,  because  the  re- 
sults of  such  questions  may  be  caused  to  differ  by  slight  circum- 
stances.     (C.  C.  A.,  1st  Cir.      Dec.  9,  1898.) 

Putnam,  J.]     *City  of  Boston  v.  Allen,  91  Fed.  Rep.  248. 

2.  An  implied  license,  if  it  relates  to  an  improvement  in  a 
process,  ordinarily  authorizes  the  employer  to  continue  to  prac- 
tice the  process  during  the  whole  period  of  the  patent,  for  the 
reason  that  the  subject  matter  of,  the  process  is  indivisible. 
But,  if  the  invention  pertains  to  a  machine,  only  the  specific 
machine  or  machines  set  up  during  the  time  of  employment 
are  protected.  The  rule,  however,  is  more  for  the  application 
of  facts  than  a  rule  of  law,  and  therefore  is  not  rigid.       ^Id. 

3.  The  permitted  use  of  one  or  more  devices  at  one  locality 
at  one  time  does  not  raise  any  presumption,  either  of  law  or 
fact,  in  favor  of  a  permission  to  use  others  at  another  locality 
some  years  later.  */(i. 

4.  If  the  circumstances  indicate  such  an  intention,  a  license 
to  use  implies  a  license  to  make  the  thing  to  be  used,  and  a  li- 
cense to  use  a  thing  which  one  is  authorized  to  make,  in  the  ab- 
sence of  controlling  circumstances,  imports  a  license  to  use  it 


IJCENSE.  1.S5 

during  the  life  of  a  patent.  If  any  restriction  was  intended  it 
is  reasonable  to  suppose  it  woukl  have  been  stipulated  for  at  the 
time.     (C.  C,  W.  D.  Mich.  S.  D.  June  13,  1899.) 

Severens,  .].]  *Kdison  Electric  Light  Co.  ct  ah  v.  Pcninsuhir 
Light,  Power  &  Heat  Co.,  95  Fed.  Rep. 
669. 

IIL  To  ]Make.  Use  and  Sell. 

1.  The  complainant,  being  the  owner  of  letters  i)atcnt  of  the 
United  States,  No.  264,586,  Sept.  19,  1882,  for  an  improvement 
in  soda-water  apparatus,  executed  a  license  to  a  firm,  conferring 
upon  it,  among  other  things,  tlie  exclusive  right  to  make,  use 
and  sell  the  patented  invention  as  applied  to  new  soda-water 
apparatus  "of  their  own  manufacture  only,"  and  providing 
that  the  license  "shall  be  binding  on  the  parties  hereto,  their 
heirs,  successors,  administrators  or  assigns  and  shall  be  valid 
until  the  19th  day  of  September,  1899,  unless  sooner  terminated 
b}'  the  written  consent  of  both  parties  hereto,"  Held  on  con- 
sideration of  all  the  provisions  in  the  license,  that  in  im])osing 
the  restriction  "of  their  own  manufacture  only,"  the  complain- 
ant intended  that  the  right  to  make,  use  and  sell  the  patented 
invention  as  applied  to  new  apparatus  should  only  be  confined 
to  such  person  or  persons  as  should  hold  the  license  from  time 
to  time  during  its  term  and  manufacture  such  apparatus,  and 
not  exclusively  to  the  firm,  and  that  the  license  was  assignable. 
(C.  C,  D.  N.  Jer.     Mar.  16,  1899.) 

Bradford,  J.]  *  Waldo  r.  American  Soda-Fountain  Co.,  92 
Fed.  Rep.  623. 

2.  In  accordance  with  the  controlling  rules  of  law,  the  sale 
and  construction  of  apparatus  embodying  the  substance  of  a 
patented  invention,  as  the  electric  lighting  fixtures  in  a  build- 
ing, carries  with  it  the  right  to  use  such  subsidiary  and  co- 
operating elements  as  are,  in  the  contemplation  of  the  parties  to 
the  sale,  necessary  to  make  the  invention  useful.  (C.  C. ,  W. 
D.  Mich.  S.  D.     June  13,  1899.) 

Severens,  J.]  *  Edison  Electric  Light  Co.  et  aJ.  v.  Peninsular 
Light,  Power  &  Heat  Co.  et  al,  95  Fed. 
Rep.  669. 


186  PATENTABILITY. 

Marking  Articles  Patented. 

1.  Where  a  patent  has  lain  absolutely  dormant,  the  require- 
ment of  the  statute  (R.  S.  §4900),  with  reference  to  marking 
patented  articles,  becomes  physically  impossible,  and  does  not 
apply  so  as  to  prevent  recovery  of  damages  in  an  action  at  law 
for  the  infringement  of  the  patent.  (C.  C,  D.  Mass.  Dec.  22, 
1898.) 

Putnam,  J.]     *Ewart  Mfg.   Co.  r.  Baldwin  Cycle-Chain  Co.  et 
al,  91  Fed.  Rep.  262. 

2.  Where  the  complainant  gave  notice  to  the  whole  public,  thus 
including  the  defendants  by  properly  marking  the  manufactured 
articles,  or  the  inclosing  packages  with  the  word  "patented," 
or  affixing  thereto  a  label  with  such  a  notice,  defendants,  whose 
infringement  is  not  denied,  cannot  avoid  liability  by  denying 
actual  knowledge  of  the  patent  at  the  time  of  the  infringement. 
It  is  not  material  that  they  did  not  have  actual  knowledge  pro- 
vided the  constructive  knowledge  is  shown,  in  the  marking  as 
provided  by  R.  S.  §  4900.  (C.  C. ,  E.  D.  Penn.  May  26,  1899. ) 
McPherson,  J.]     *Hogg  r.  Gimbel,  etal,  94  Fed.  Rep.  518. 

3.  Where  in  an  action  to  recover  penalties  for  falsely  mark- 
ing articles  "patented,"  the  plaintiff  alleged  that  defendant,  on 
a  certain  date  and  each  and  every  day  thereafter,  until  the  com- 
mencement of  this  suit,  did  "mark  upon  1500  spring-balance 
computing  scales  the  words  and  figures  '  Patented  Feb.  13,  '94,'  " 
and  asks  judgment  for  $150,000  one-half  payable  to  the  United 
States  and  the  other  half  to  the  plaintiff.  Held^  that  while  it 
is  doubtful  whether  the  continuous  markings  of  a  day  or  given 
time  would  constitute  more  than  a  single  cause  of  action,  yet 
the  defendant  is,  under  the  provisions  of  the  statute  of  the  state 
in  which  the  action  is  brought,  entitled  to  have  the  different 
causes  of  action  separately  stated  and  numbered.  (D.  C,  S. 
D.  Ohio  W.  D.     July  22,  1899.) 

Thompson,  J.]     *Hoytr.  Computing  Scale  Co.,  96  Fed.  Rep. 
250. 

Patentability. 

I.   In  General. 
II.  Combination. 


PATENTABILITY.  187 

III.  Invention  and  Skill  Distinguished. 

IV.  Invention  and  Suggestion  Distinguished. 
V.  Evidence  of  Extensive  Use. 

VI.  Evidence  of  Result. 

VII.   Utility. 

VIII.  Novelty  and  Invention. 

(a)  New  Use  or  Adaptation. 
(6)  Process  or  Method. 
(c)   Products. 
(rf)  Substitution  of  Materials. 

IX.  Novelty  Without  Invention. 

(a)  Aggregation. 

(6)  Arrangement. 

(c)  Composition  of  Matter. 

(d)  Double  or  Analogous  Use. 

(e)  Process  or  Method. 

(/)  Substitution  of  Materials, 
(g)  Particidar  Cases. 

I.   In  General. 

1.  Where  patentable  novelty  has  been  denied  not  only  by  one 
but  by  all  the  expert  tribunals  of  the  Patent  Office,  the  appli- 
cant must  make  out  a  very  clear  case  of  invention,  (Barratt  v. 
Commissioner  of  Patents,  79  0.  G.  2020,  cited,)  and  this  is 
but  another  application  of  the  same  principle  that  governs  in 
those  cases  where  a  patent  having  been  regularly  granted  all 
doubt  in  respect  of  invention  is  resolved  in  favor  of  the  patentee. 
Fenton  Co.  v.  Office  Specialty  Co.,  12  App.  D.  C.  201,  cited. 
(C.  A.  D.  C,  Feb.  7,  1899.) 

Shepard,  J.]     *  Smith  V.  Duell,  Commissisoner  of  Patents,  87 
0.  G.  893. 

2.  It  is  as  necessary  to  the  validity  of  a  claim  that  the  con- 
struction covered  by  it  involve  invention  as  that  it  involve 
novelty.     (June  1,  1899.) 

Greeley,  A.  C]     Ex  parte  Perkins,  88  0.  G.  548. 


188  PATENTABILITY. 

3.  An  idea  or  discovery  unaccompanied  by  any  inventive  act 
or  practical  application  of  an  inventive  nature  is  not  within  the 
scope  of  the  patent  hiws.  (C.  C,  D.  N.  Jer.  Feb.  13,  1899.) 
Bradford,  J.]     *  McEwan  Bros.  Co.  r.  McEwan  et  al  91  Fed. 

Rep.  787. 

4.  A  mere  abstract  idea  is  not  patental)le  irrespective  of  the 
means  described  for  carrying  it  into  execution.  If  when  the 
question  arises  the  answer  is  self-evident,  there  can  be  no  pat- 
entable novelty  in  carrying  out  the  idea.  (C.  C. ,  S.  D.  N.  Y, 
May  8,  1899.) 

CoXE,  J.]     *Badische  Analin  &:  Soda  Fabrik  v.  Kalle  et  al,  94 
Fed.  Rep.  163. 

II.  Combination. 

1.  When  the  combination  as  a  whole  performs  a  duty  that 
no  combination  of  such  parts  has  i^erformed  before,  that  gives 
it  patentability.     (C.  C,  E.  D.  N.  Y.     Oct.  6,  1898.) 

Thoma3,  J.]  *Morrin  v.  Lawler.  Same  ef  a/,  v.  Edison  Elec- 
tric Illuminating  Co.  of  Brooklyn,  90  Fed. 
Rep.  285. 

2.  Where  the  combination  was  one  of  old  elements,  but  it 
was  a  novel  arrangement  of  those  devices,  so  that  by  their  ac- 
tion a  result  was  attained  which  had  not  before  been  success- 
fully accomplished,  such  a  combination  is  patentable.  (C.  C. 
A.,  2dCir.     May  25,  1899.) 

Shipman,  J,]     *  Nelson  et  al.   v.   A.   D.   Farmer  &  Son  Type 
Founding  Co.  et  al,  95  Fed.  Rep.  145. 

3.  A  combination  of  old  elements,  patented  or  non-patenta- 
ble in  themselves,  may  be  the  result  of  invention,  and  thus  in 
itself  be  patentable.  But  such  a  combination  must  possess  at- 
tributes distinct  from  those  of  its  constituent  elements,  and  the 
old  elements  must  so  cooperate  with  each  other  as  to  produce  a 
new  and  useful  result.  A  mere  duplication  of  old  elements 
may  be  useful,  but  it  does  not  produce  a  result  differing  from 
what  would  be  produced  by  the  same  elements  separately,  ex- 
cept in  quantity  or  degree.  There  must  be  some  attribute  or 
quality  in  the  combination  distinct  from  those  of  its  elements, 


PATENTABILITY 


189 


so  as  to  distinguish  it  from  a  mere  aggregation  of  parts.      (C. 
C,  D.  N.  J.     May  25,  ISiM). ) 

Gray,  J.]     *Maier  d  al.  r.  Bloom  et  al.,  9-")  Fed.  Rep.  159. 
III.  Invention  and  Skill  Distinguished. 

1.  The  use  of  dowel  i)ins  and  lioles  for  centering  one  part  of 
a  device  upon  another  is  so  old  and  well-known  as  to  be  a  mat- 
ter of  common  knowledge,  and  was  in  fact  shown  in  some  of 
the  references  cited,  and  to  substitute  this  old  centering  njeans 
for  the  means  shown  in  the  patents  cited,  Avould  not  involve 
invention  but  merely  the  exercise  of  good  judgment.  (June  8, 
1899.) 

Greeley,  A.  C]      Ex  parte  Pridmore,  67  MS.  Dec.  123. 

2.  A  mechanic,  skilled  in  shaping  metal,  confronted  with  the 
practical  idea  of  avoiding  friction  between  a  trolley  wheel  and 
the  track  or  groove  would  easily  devise  means  for  accomplishing 
this  result.  If  a  wheel  did  not  revolve  freely  in  a  groove  of 
given  shape  it  would  almost  necessarily  occur  to  him  that  the 
groove  should  be  so  shaped  as  not  to  offer  resistance  or  obtrude 
friction  ;  and  while  such  change  in  shape  may  produce  a  de- 
sirable improvement  in  the  domain  of  construction,  yet  it  would 
be  the  result  of  ordinary  judgment  and  mechanical  skill,  and 
would  not  involve  inventive  genius.  It  would  be  going  too  far 
to  hold  that  one  who  had  found  that  a  wheel  of  given  shape 
could  revolve  more  freely  in  circular  or  rounded  grooves  than  in 
angular  grooves  should  be  given  the  monopoly  of  all  the  half- 
round  or  circular  trolley  track  which  the  business  of  this 
country  may  require.  (C.  C,  D.  Mass.,  Dec.  2,  1898.) 
Aldrich,  J.]     *Coburn  Trolley-Track  Mfg.  Co.  v.  Chandler  e< 

al,  91  Fed.  Rep.  260. 

3.  Where  the  sweater  was  felt  to  be  objectionable,  but  was 
still  worn,  and  there  was  no  struggle  to  devise  something  to  take 
its  place,  in  which  the  patentee  was  alone  successful,  the  produc- 
tion of  a  garment  which  would  be  divested  of  so  much  of  the 
sweater  as  objectionally  increased  the  clothing  of  the  wearer 
required  no  special  power  of  discernment  to  distinguish  the 
portion  to  be  discarded,  but  was  only  the  exercise  of  niechanical 
skill.      (C.  C,  E.  D.  Penn.     Jan.  18,  1899.) 

Dallas,  J.]     *  Way  v.  McClarin,  91  Fed.  Rep.  663. 


190  PATENTABILITY. 

4.  Mere  structural  changes,  or  changes  in  the  location  of  parts 
of  an  operative  and  successful  machine,  which  only  add  to  the 
capacity  of  the  machine,  involve  only  mechanical  skill,  and  not 
invention.      (C.  C,  S.  D.  Cal.     Jan.  30,  1899.) 
Wellborn,  J.]     *  Lettelier  ?;.  Mann  etal,  91  Fed.  Rep.  909. 

5.  AVhere  the  change  in  size  and  shape  of  a  part  of  an  old 
machine  was  but  such  an  adaption  of  an  old  thing  to  a  new 
purpose  as  would  occur  to  a  mechanic  of  ordinary  skill,  it  did 
not  justify  a  patent.  */d 

6.  The  idea  of  providing  a  coiled-wire  handle  for  implements 
which  come  in  contact  with  heat,  thus  permitting  the  circulation 
of  air  and  ensuring  sufficient  coolness  of  the  handle  to  permit 
of  ready  manipulation  at  all  times,  having  once  been  put  into 
practical  form,  the  subsequent  work  of  fitting  the  handle  to  the 
bails  of  different  vessels  and  adjusting  it  to  new  environments 
is  within  the  domain  of  the  skilled  mechanic.  (C.  C,  N,  D. 
N.  Y.     Feb.  27,  1899.) 

CoxE,  J.]     ^Gaitley  v.  Greene,  92  Fed.  Rep.  367. 

7.  The  substitution  of  a  heavy  "momentum"  pulley  for  a 
light  pulley  may  be  advantageous  in  a  particular  case,  but  the 
advantage  results  from  the  use  of  ordinary  mechanical  skill 
and  without  the  exercise  of  inventive  faculty.  (C.  C. ,  D,  Mass. 
Feb.  24,  1899.) 

Brown,  J.]     *  Parsons  v.  Seelye,  92  Fed.  Rep.  1005. 

8.  As  soon  as  the  want  of  a  high  back  as  well  as  a  high  front 
to  overalls  should  be  felt,  the  exercise  of  mechanical  skill,  with- 
out inventive  genius  would  provide  it.  (C.  C. ,  D.  Ver.  Apr. 
1,  1899.) 

Wheeler,  J.]     *Corser  v.   Brattleboro  Overall  Co.,   93  Fed. 
Rep.  805. 

9.  The  placing  of  garment  patterns  in  a  particular  way  for 
the  purpose  of  economizing  cloth  does  not  amount  to  invention. 
If  the  order  of  placing  is  not  new  it  is  merely  a  good  way;  if  it 
is  new,  it  is  merely  a  better  way,  and  amounts  only  to  a  matter 
of  judgment,  producing  good  workmanship,  and  not  a  matter 
of  invention,  producing  a  distinctively  new  method.  (C.  C. , 
D.  Ver.     Apr.  1,  1899.) 

Wheeler,  J.]     *Corser  v.    Brattleboro  Overall  Co.,   93  Fed. 
Rep.  809. 


PATENTABILITY.  191 

10.  A  patent  must  combine  utilitj',  novelty  and  invention. 
It  may  in  fact  embrace  utility  and  novelt}'  in  a  high  degree, 
and  still  be  only  the  result  of  mechanical  skill  as  distinguished 
from  invention.  It  must  amount  to  invention.  (C.  C.  A.,  4th 
Cir.     May  2,  1899.) 

GoFF,  J.]     *  Christie  et  al.  v.  Hygeia  Pneumatic  Bicycle  Saddle 
Co.  et  al,  93  Fed.  Rep.  965. 

IV.  Invention  and  Suggestion  Distinguished. 

ISIerely  telling  a  skilled  workman  to  fix  an  old  device  so  that 
it  will  perform  a  new  function,  would  not  have  produced  a  new 
device,  unless  the  workman,  in  addition  to  his  mechanical  skill, 
possessed  sufficient  ingenuity  to  contrive  the  new  device,  and  if 
such  new  device  involved  patentable  invention,  the  original  sug- 
gestion would  not  defeat  the  right  to  a  patent  therefor.  Such  a 
suggestion  is  mere  information,  the  receiving  and  acting  upon 
which  are  not  surreptitious  or  unjust.  (C.  C,  D.  Ver.  Apr. 
1,  1899.) 

Wheeler,  J.]     *Corser  v.   Brattleboro  Overall  Co.,    93  Fed. 
Rep.  809. 

V.  Evidence  of  Extensive  Use. 

1.  Although  it  may  appear  that  a  device  is  of  superior  utility 
over  other  devices,  as  it  has  gone  into  general  use,  the  fact  that 
it  hns  gone  into  such  use,  even  to  the  displacement  of  other  de- 
vices, has  no  weight  upon  the  question  of  patentable  novelty 
except  when  it  is  otherwise  in  doubt.  (C.  A.  D.  C.  Feb.  7, 
1899.) 

Shepard,  J.]     *  Smith  v.  Duell,  Com'r.  of  Pat.,  87  0.  G.  893. 

2.  In  a  doubtful  case,  the  fact  that  the  patented  device  has 
gone  into  general  use,  and  superseded  other  devices,  may  be  suf- 
ficient to  turn  the  scale,  and  sustain  the  presumption  of  patent- 
ability arising  from  the  grant  of  the  patent.  (C.  C.  A.,  3d  Cir. 
Nov.  28,  1898.) 

AcHESON,  J.]     ^=  Thomas  Roberts  Stevenson  Co.  v.   McFassell, 
90  Fed.  Rep.,  707. 

3.  The  question  of  anticipation  or  lack  of  novelty  not  l>eing 
free  from  doubt,  the  success  with  which  the  patented  product 


192  PATENTABILITY. 

has  met  has  weight  in  turning  the  scale  in  favor  of  the  inven- 
tion.    (C.  C,  D.  N.  Jer.     Feb.  18,  1899.) 
Beadford,  J.]     *McEwan  Bros.  Co.  v.  IVIcEwan  ct  a/.,  91  Fed. 
Rep.  787. 

4.  Where  tlie  differences  between  the  patented  devices  and 
the  alleged  anticipating  devices  are  slight,  yet  are  sufficient  to 
make  the  patented  device  commercially  successfnl,  the  magni- 
tude of  that  success  aids  the  court  in  resolving  doubtful  consid- 
erations in  favor  of  the  patent  in  suit.  (C.  C. ,  S.  D.  N.  Y. 
Dec.  27,  1898.) 

Thomas,  J.]     -''Rubber  Tire  Wheel  Co.  v.  Columbia  Pneumatic 
Wagon  Wheel  Co.,  91  Fed.  Rep.  978. 

5.  Where  the  sales  of  an  article  and  its  extensive  use  have 
been  phenomenal  they  may  be  considered  as  evidence  of  nov- 
elty, value  and  usefulness  of  the  article,  but  it  does  not  neces- 
sarily follow  that  invention  was  required  to  design  and  construct 
it,  and  where  invention  is  lacking  a  patent  for  the  article  cannot 
be  sustained.     (C.  C.  A.,  4th  Cir.     May  2,  1899.) 

GoFF,  J.]     *  Christy  et  al.  v.  Hygeia  Pneumatic  Bicycle  Saddle 
Co.,  93  Fed.  Rep.  965. 

VI.  Evidence  of  Result. 

1.  The  addition  of  improvemenis  toiin  old  but  commercially 
unsuccessful  machine,  whereby  a  great  increase  of  speed  and 
great  saving  in  cost  of  operation  results,  thereby  bringing  the 
machine  up  to  commercial  requirements,  so  that  it  may  be  con- 
sidered as  the  first  successful  machine,  entitles  the  improver  to 
a  place  among  inventors.  (C.  C,  N.  D.  Cal.  May  22,  1899.) 
Morrow,  J.]     *  Fruit  Cleaning  Co.   v.   Fresno  Home-Packing 

Co.  etoL,  94  Fed.  Rep.  845. 

2.  Where  a  machine  turned  out  satisfactory  work,  but  it  was 
not  commercially  successful,  for  the  reason  that  it  did  not  turn 
out  the  work  with  desirable  rapidity.  Held,  that  such  device  was 
not  so  inoperative  as  to  be  deficient  in  patentability.  (C.  A.  D. 
C.     Apr.  4,  1899.) 

Morris,  J.]     *Bechman  v.  Wood,  89  0.  G,  2459. 

VII.  Utility. 

1.   While  utility  is  a  circumstance  to  be  considered  in  deter- 


rATENTAHlLITV 


103 


mining  the  question  of  novelty,  it  is  not  necessarily  conelusive 
of  the  question  ;  for,  if  so,  every  improvement  in  a  machine, 
however  slight  and  although  resulting  from  nieehanieal  skill 
only,  would  he  patentahle,  and  this,  according  to  the  uniiues- 
tionahle  weight  of  authority,  is  not  the  law.  (C.  C,  S.  I).  C'al. 
Jan.  30,  1S90.) 
Wellborn,  J.]     =i=  Letteher  r.  :\rann  ct  al.,  91  Fed.  Rep.  909. 

2.  The  utility  of  an  invention  must  he  gauged  liy  llic  state 
of  the  art  at  time  the  })atent  was  api)lied  for,  and  it  is  imma- 
terial that  since  then  otlicr  means  have  heen  employed  to  ac- 
complish the  same  result  at  still  less  cost.  (('.  C,  I).  N.  J. 
July  14,  1899. ) 

KiRKPATKicK,  J.]     *M'estinghouse  Electric  Mfg.  Co.  v.  Beacon 
Lamp  Co.  etal,  95  Fed.  Rep.  462. 

3.  Mere  utility  does  not  estahlish  patentahility.  It  is  not 
every  improvement  in  a  mechanism  that  is  the  result  of  the 
exercise  of  the  inventive  faculty.  In  the  progress  of  the  arts, 
improvements  are  constantly  heing  developed  wdiich  are  clearly 
the  result  of  obvious  mechanical  suggestion,  and  to  grant  patent 
monopolies  for  such  improvements  would  not  be  to  encourage 
invention,  but  would  impose  upon  mechanics  and  the  public 
generally  burdens  for  which  there  would  be  no  adequate  com- 
pensation.    (C.  C,  E.  D.  Penn.     Aug.  9,  1899.) 

Gray,  J.]     *Shoe  r.  Gimbel  et  al,  96  Fed.  Rep.  96. 
IX.  Novelty  and  Invention. 

(a)  New  Use  or  Ada-ptation. 

1.  A  device  that  effects  a  valuable  function  should  not  he  de- 
clared unpatentable  or  lacking  in  novelty  because  some  one  has 
used  one  of  the  parts  here  and  another  there  to  secure  the  same 
result,  but  has  used  them  so  awkwardly  and  illy  associated 
"with  other  parts  that  the  result  was  not  obtainable.  (C.  C,  S. 
D.  N.  Y.     Dec.  27,  1898.) 

Thomas,  J.]     *  Rubber  Tire  Wheel  Co.  r.  Columbia  Pneumatic 
Wagon  Wheel  Co.,  91  Fed.  Rep.  978. 

2.  It  is  established  by  various  decisions  that  a  novel  concep- 
tion of  the  a}>plieation  of  old  means  to  produce  an  unusual  or 
unexpected  result  is  not  a  double  use  and  may  be  patented. 

13 


194  PATENTABILITY. 

The  question  in  such  cases  is  whether  or  not  the  conception  in- 
volves invention.     (C.  C,  D.  Conn.     Sept.  5,  1899.) 
TowNSEND,  J.]     *  Yale  &:  ToAvne  Mfg.  Co.  r.  Sargent  &  Co.,  97 
Fed.  Rep.  106. 

IX.   Novelty  and  Invention. 
(h)   Process  or  Method. 

1.  In  view  of  the  case  of  Westinghouse  v.  Boyden  Co.,  83  0. 
G.  1067;  170  U.  S.  537,  it  cannot  be  claimed  that  the  case  of 
Risdon  Works  v.  Medart,  71  O.  G.  751;  158  U.  S.  68,  decided 
that  a  process  to  be  patentable  necessarily  involves  a  chemical 
or  other  similar  elemental  action.      (Apr.  10,  1899.) 

DuELL,  C]     Exjmrte  Rogers  &  Winslow,  87  0.  G.  699. 

2.  From  the  decision  of  Westinghouse  r.  Boyden  Co.  it  may 
be  deduced,  first,  that  processes  which  involve  "some  chemical 
or  other  elemental  action  "  are  patentable;  second,  that  processes 
which  involve  "nothing  more  than  the  operation  of  a  piece  of 
mechanism  of  the  function  of  a  machine"  are  not  patentable, 
and,  third,  that  processes  may  be  patentable  w^hich  "though 
ordinarily  and  most  successfully  performed  by  machinery  may 
also  be  performed  by  simple  manipulation."  Id. 

3.  Processes  which  consist  in  the  manipulation  of  a  blank  to 
make  abrasive  pad-covers  for  buffing-machines,  the  steps  of 
which  consist  substantially  in  holding  the  edge  of  the  blank, 
stretching  and  forming  the  center  of  the  blank,  and  manipu- 
lating the  blank  so  that  the  edges  wall  be  brought  over  the  cen- 
tral part.  Held,  to  fall  within  the  third  class  of  processes  and  to 
be  patentable.  Id. 

4.  Some  processes  of  manufacture  are  certainly  patentable, 
though  no  test  by  which  they  may  be  distinguished  from  those 
which  are  not,  and  which  can  be  definitively  applied  to  all  cases, 
has  been  authoritatively  established.  But  there  is  no  warrant 
in  the  authorities  for  the  assumption  that,  unless  a  chemical 
change  be  effected  by  a  process,  no  patentable  invention  or  dis- 
covery can  be  involved  in  it.  It  is  true  that  in  both  Corning  v. 
Burden,  15  How.  252,  and  Locomotive  Works  v.  Medart,  158  U. 
S.  71,  15  Sup.  Ct.  745,  71  O.  G.  751,  processes  involving  chem- 
ical reaction  were  contrasted  Avith  methods  which  comprise  noth- 
ing but  successive  mechanical  steps  to  produce  a  merely  mechan- 


PATENTABILITY.  195 

ical  change  in  the  sul)stanees  operated  upon;  hut  in  so  doing 
the  courts  were  ilhistrating,  not  defining,  the  difference  between 
a  patentable  and  an  unpatentable  process.  (C.  C,  E.  D.  Penn. 
Jan.  12,  1899.) 

Dallas,  J.]  ^^^IMelvin  et  al.  v.  Thomas  Potter,  Sons  &  Co.,  91 
Fed.  Rep.  151. 
5.  A  discovery  to  be  patentable  must  have  the  attributes  of 
invention,  but  the  mental  operation  is  somewhat  different  in 
one  who  invents  a  machine  and  one  who  discovers  a  process. 
The  basic  truth  upon  which  rests  a  process  ma}'  come  to  the  dis- 
coverer suddenly  and  unexpectedly.  He  may  not  understand 
the  law  upon  which  the  process  operates,  and  he  may  be  unable 
to  explain  the  cause  of  certain  iDhenomena;  nevertheless,  if  he 
be  the  first  to  give  to  the  world  as  a  result  of  his  method  a  new 
and  valuable  article  of  manufacture,  he  is  entitled  to  protection. 
(C.  C,  S.  D.  N.  Y.     May  8,  1899.) 

CoxE,  J.]     *Badische  Anahn  &  Soda  Fabrik  v.  Kalle  et  al.,  94 
Fed.  Rep.  163. 

IX.  Novelty  and  Invention. 
(c)  Produds. 
If  one  discovers  a  new  and  useful  product  he  is  entitled  to 
the  full  benefit  thereof  no  matter  how  it  may  be  produced.  A 
patent  for  a  product  must  produce,  by  the  process  it  describes, 
that  article  and  no  other.  If  the  article  be  old,  it  cannot  be  the 
subject  of  a  patent  even  though  made  artificially  for  the  first 
time.  A  product  is  not  patentable  upon  the  ground  that  an  al- 
ready known  article  is  made  more  perfectly  by  the  new  process 
or  machine  than  it  was  before.  If  this  rule  were  otherwise  the 
product  of  each  successive  machine  would  be  patentable,  but 
improvements  in  degree  or  quality  are  not  patentable.  (C.  C, 
S.  D.  N.  Y.     May  8,  1899. ) 

CoxE,  J.]     *Badische  Analin  &  Soda  Fal)rik  v.  Kalle  et  al,  94 
Fed.  Rep.  163. 

IX.  Novelty  and  Invention. 

(rf)  Substitution  of  Materials. 
1,   The  substitution  of  one  material  for  another  having  the 
same  general  characteristics,  involves  no  patentable  invention. 


196  PATENTABILITY. 

particularly  where  the  substitution  is  simple  and  obvious,  in- 
volving no  novelty  of  construction  nor  anything  substantially 
new  in  the  resulting  product.  But  where  the  substituted  ma- 
terial possessed  new  and  theretofore  unknown  properties  which 
produce  better  results  and  save  time,  labor  and  money,  then 
such  substitution  involved  invention.  (C.  C,  S.  D.  N.  Y. 
Dec.  5,  1898.) 

CoxE,  J.]     *King  ct  al.  v.  Anderson  et  al,  90  Fed.  Rep.  500. 

2.  The  substitution  of  hydrated  lime  for  powdered  marble  in 
a  compound  for  restraining  the  too  rapid  setting  of  plaster  of 
Paris  where  the  resulting  compound  is  better  calculated  to  mix 
evenly  with  the  plaster  and  its  action  is  more  uniform,  prompt 
and  relial)le,  and  further,  where  the  difference  between  the  old 
compound  and  that  with  the  substituted  lime  hydrate  was  the 
difference  between  partial  and  complete  success,  involved  patent- 
able invention.  ^Id. 

IX.   Novelty  without  Invention. 
(o)  Aggregation. 

1.  The  combination  here  claimed  has  not  produced  a  new  de- 
vice differing  in  character  and  function  from  others  then  in 
existence  and  common  use,  nor  does  it  accomplish  a  novel  re- 
sult through  the  co-operative  action  of  old  agencies.  The  ap- 
plicant has  done  nothing  more  than  exercise  mechanical  skill 
in  bringing  old  devices  into  juxtaposition,  and  th(>reby  consti- 
tuting an  aggregation  merely  of  separate  elements.  (C.  A.  D. 
C.     Feb.  7,  1899.) 

Shepard,  J.]     *  Smith  v.  Duell,  Com.  of  Pat.,  87  0.  G.  893. 

2.  Where  a  combination  of  old  devices  produces  a  new  result 
such  combination  is  doul)tless  patentable,  but  where  the  com- 
bination is  not  only  of  old  elements,  but  of  old  results,  and  no 
new  function  is  evolved  from  such  combination,  it  falls  within 
the  rulings  of  this  court  in  Hailes  v.  Van  Wormer,  5  0.  G.  89; 
20  Wall.  353,  368;  Reckendorfer  v.  Faber,  10  0.  G.  71;  92  U. 
S.  347,  356;  Phillips  v.  City  of  Detroit,  17  0.  G.  191;  111  U.  S. 
604;  Brinkerhoff  v.  Aloe,  146  U.  S.  515,  517;  Palmer  v.  Corn- 
ing, 70  0.  G.  1497;  156  U.  S.  342,  345;  Richards  v.  Chase  Ele- 


PATENTABILITY.  197 

vator  Co.,  71  0.  G.  1456;  158  U.  S.  299.     (Sup.  Ct.  V.  S.     May 
15,  1899.) 

Brown,    J.]     *  Office  Specialty   Mfg.    Co.    r.    Fcnton    Metallic 
Mfg.  Co.,  87" 0.  G.  1608. 

X.   Novelty  Without  Invention. 
(6)  Arrangement. 

1.  Where  a  mechanical  result  is  obtained  l)y  the  movement 
of  one  element  upon  another  element  of  a  combination,  it  does 
not  usually  involve  invention  to  reverse  the  operation,  and 
secure  the  same  result  by  making  the  first  element  stationary 
and  the  second  movable.  And  so,  where  the  resultant  motion 
is  secured  by  a  stationary  cam  guiding  a  tool,  it  may  often  be 
an  obvious  change  to  reverse  the  parts  by  making  the  cam 
movable  and  the  tool  stationary.  But  the  question  whether  or 
not  such  change  is  obvious  is  to  be  determined  by  examination 
of  the  particular  machine  in  which  it  is  made.  (C.  C.  A.,  6th 
Cir.     Mar.  7,  1899.) 

Taft,    J.]     *Penfield  v.   Chambers  Bros.    Co.,   92  Fed.   Rep. 
630. 

2.  While  it  is  true  that  the  exact  counter])art  of  the  patented 
device  is  not  found  in  the  prior  art,  every  feature  of  it  is  to  be 
found  in  earlier  patented  devices  combined  in  the  same  imme- 
diate relations  and  performing  the  same  functions  as  in  the  com- 
binations of  the  patented  device  ;  and  whatever  of  novelty  there 
may  be  said  to  be  in  the  combination  is  a  matter  of  selection 
and  arrangement,  and  did  not  involve  invention.  (C.  C.  A., 
7th  Cir.     Feb.  23,  1899.) 

Per  Curiam.]  *Lowenbach  v.  Hake-Stern  Co.  et  al,  92  Fed. 
Rep.  661. 
8.  After  dynamic-electric  machines  and  electric  motors  of 
sufficient  power  to  serve  as  a  propelling  force  for  driving  street 
cars  were  invented,  it  did  not  involve  the  exercise  of  the  in- 
ventive faculty  to  substitute  good  machines  in  an  old  combina- 
tion for  the  defective  ones  when  the  functions  to  be  performed 
had  been  clearly  outlined  in  the  prior  art.  (C.  C.  A.,  6th  Cir. 
Mar.  7,  1899.) 

Taft,  J.]     *  Kelly  et  al.  v.  Springfield  Ry.  Co.  et  al,  92  Fed. 
Rep.  614. 


198  PATENTABILITY. 

X.  Novelty  Without  Invention. 

(c)  Composition  of  Matter. 

In  order  to  sustain  a  patent  for  a  compound,  it  is  not  only 
necessary  that  its  production  in  the  manner  prescribed  in  the 
specification  shall  be  novel,  but  it  is  necessary  that  such  pro- 
duction shall  also  involve  invention.  (C.  C.  A.,  3d  Cir.  Sept. 
22,  1899.) 

Bradford,  J.]     *  Arlington  Mfg.  Co.  r.  Celluloid  Co.,  97  Fed. 
Rep.  91. 

X.   Novelty  Without  Invention. 

(d)  Double  or  Analogous  Use. 

1.  The  courts  have  held  that  the  mere  use  of  an  apparatus  is 
not  an  art,  machine,  manufacture  or  composition  of  matter,  and 
therefore  does  not  come  within  the  definition  of  a  patentable 
invention.  This  holding  is  not  inconsistent  with  the  accepted 
doctrine  that  invention  may  sometimes  be  displayed  in  the 
adoption  of  an  old  device  in  a  different  art,  but  even  in  such  a 
case  the  thing  itself  and  not  the  bare  idea  of  using  it,  should 
be  made  the  subject  of  the  claims.  (Apr.  10,  1899.) 
Greeley,  A.  C]     Ex  parte  AwereW,  66  MS.  Dec.  442. 

2.  An  improvement  in  a  stocking-supporter,  consisting  in 
raised  lugs  on  the  side  of  the  slot-plate  to  prevent  the  stud  over 
which  the  upper  end  of  the  stocking  is  gripi3ed  from  rising  in 
the  slot  and  becoming  disengaged,  does  not  rise  to  the  dignity 
of  invention  in  view  of  the  fact  that  lugs  for  the  same  purpose 
have  been  used  in  suspender-clasps.  (C.  A.  D.  C.  Feb.  7, 
1899.) 

Shepard,  J.]     *  Smith  v.    Duell,  Commissioner  of  Patents,  87 
0.  G.  893. 

3.  There  is  no  such  remoteness  in  the  use  of  the  slot-plate 
with  the  lugs  in  the  clasp  of  the  suspender  as  is  sufficient  to 
raise  its  adaptation  to  use  in  a  stocking-supporter  from  the 
plane  of  mechanical  ingenuity  to  that  of  invention.  The  use 
is  clearly  analogous.  (Potts  r.  Creager,  155  U.  S.,  597,  and 
Briggs  V.    Commissioner  of    Patents,    78   0.    G.,    169,    cited.) 

4.  The  art  of    painting  on  canvas   and  paper  is  so  nearly 


PATENTABILITY.  199 

allied  to  painting  or  decorating  clay  that  it  involved  no  inven- 
tion to  transfer  the  use  of  the  atomizer  from  one  art  to  the  other, 
and  the  use  of  the  atomizer  to  apply  pigments  to  clay  is  only  a 
case  of  applying  Avhat  was  on  its  face  expressly  intended  for 
all  arts  to  a  special  art  for  which  it  was  peculiarly  adapted. 
(C.  C,  S.  D.  Ohio,  W.  D.  Dec.  2,  1898.) 
Taft,  J.]  *Fry  r.  Rookwood  Pottery  Co.  et  al,  90  Fed.  Rep. 
495. 

5.  A  device  having  transverse  pipes  arranged  in  horizontal 
series  in  a  vessel  into  which  beer  was  allowed  to  drip,  and 
through  which  pipes  there  was  a  continuous  flow  of  cold 
water  to  cool  the  beer,  having  been  shown  to  be  old.  Held,  that 
no  invention  was  involved  in  using  a  substantially  similar  series 
of  pipes  in  the  Solvay  bicarbonate  column,  particularly  in  view 
of  the  fact  that  other  quite  similar  means  had  also  been  used  to 
cool  the  bicorbonate  mixture  of  the  Solvay  column.  (C.  C.  A.. 
6th  Cir.     Nov.  28,  1898. ) 

Taft,  J.]     *  Solvay  Process  Co.  i\  Michigan  Alkali  Co.  et  ai, 
90  Fed.  Rep.  818. 

6.  If  the  patentee  had  invented  some  practical  method  of 
overcoming  the  tendency  of  street-railway  rails  to  expand  and 
contract,  according  to  changes  in  temperature,  he  would  have 
invented  something  new  and  useful,  but  he  is  not  entitled  to  a 
monopoly  of  such  supposed  invention  merely  because  the  well- 
known  old  process  of  his  patent  fell  into  a  use  made  available  by 
the  adaptation  of  new  conditions  to  new  needs,  with  which  the 
patentee  had  no  concern.  The  application  of  an  old  and  well- 
known  method  to  a  new  use  in  an  art  analogous  to  that  to  which 
the  old  method  had  been  a2:)plied  does  not  involve  patentable 
invention.  (C.  C,  E.  D.  Mo.,  E.  D.  Jan.  10,  1899.) 
Adams,  J.]     *Falk  :Mfg.  Co.  v.  Missouri  Ry.  Co.  et  al,  91  Fed. 

Rep.  155. 

7.  As  overalls  with  high  fronts  or  bibs  Avere  old,  the  patent 
could  only  be  valid  for  specific  improvements  if  valid  at  all, 
and  if  the  improvement  could  be  said  to  cover  the  extension  of 
the  back  of  overall  to  the  same  height  as  the  bib  in  front,  for 
the  protection  of  the  back  of  the  wearer,  the  extension  would 
be  like  the  bib  in  front  and  would  be  merely  putting  that  device 


200  PATENTABILITY. 

to  the  same  use  in  a  new  i)]ace  in  the  same  garment,  for  the 
same  purpose.     Such  putting  to  a  new  use  does  not  constitute 
patentahl-e  invention.      (C.  C,  D.  Ver.     Apr.  1,  1899.) 
Wheeler,   J.]     *  Corser  v.   Brattlehoro  Overall  Co.,   93  Fed. 
Rep.   805. 

8.  The  question  of  double  or  analogous  use,  i.  e.,  whether 
the  new  use  is  so  nearly  analogous  to  the  former  one  that  the 
applicability  of  the  device  to  its  new  use  would  occur  to  a  per- 
son of  ordinary  mechanical  skill,  is  one  dependent  upon  the 
peculiar  facts  of  each  case.  (C.  C.  A.,  2d  Cir.  Apr,  4,  1899.) 
Lacombe,   J.]     *  Briggs  v.    Duell,    Com.    of  Patents,   93   Fed. 

Rep.  972;  87  0.  G.  1077. 
X.   Novelty  without  Invention. 
(e)  Process  or  Method. 

1.  A  process  or  method  of  forming  a  rail-joint  consisting  of, 
(])  Cleaning  the  surfaces  of  the  rails  for  a  short  distance  from 
the  ends  to  be  joined;  (2)  heating  the  cleaned  rail  ends;  (3) 
forming  and  adjusting  a  mould  upon  and  around  the  rail  ends; 
(4)  pouring  molten  metal  into  this  mould  and  letting  it  remain 
there  until  it  solidifies,  belongs  to  the  domain  of  mechanical 
skill  and  not  to  the  domain  of  invention,  for  each  and  every 
step  of  the  process  was  well-known  to  foundrymen  and  artisans 
in  iron,  steel  and  metals  long  before  its  particular  application  to 
the  forming  of  rail  joints.  (C.  C,  E.  D.  Mo.,  E.  D.  Jan.  10, 
1899.) 

Adams,  J.]     *Falk  Mfg.  Co.  v.  Missouri  Ry.  Co.  et  al,  91  Fed. 
Rep.  155. 

2.  Where  the  process  is  simply  the  mechanical  operation  of  a 
combination  of  mechanical  elements,  with  no  chemical  or  sim- 
ilar elemental  action  involved  in  producing  the  desired  result, 
the  operation  is  simply  the  function  of  a  machine,  and  as  such 
is  not  the  subject  of  a  patent.  (C.  C,  D.  N.  Jer. ) 
KiRKPATRicK,  J.]     *  Stokes  Bros.  Mfg.  Co.  v.  Heller  et  al,  96 

Fed.  Rep.  104. 
IX.   Novelty  without  Invention. 

(/)  Substitution  of  Materials  or  Parts. 
1.   It  is  well  settled  that  the  mere  substitution  of  one  mate- 


PATENTABILITY.  201 

rial  for  another  does  not  involve  jjatentalili'  novelty.  altlKtugh 
the  substitnted  material  may  he  sujierior  for  the  jJiirjKisc  to  that 
before  in  use.      (Feb.  2,  18!)9.) 
Greeley,  A.  C]      Ex  j^arte  Cochran,  6(3  MS.  Dec.  247. 

2.   The  substitution  of  direet  driving  for  indireet  driving  by 
countershaft  and  gearing  is  a  mere  substitution  of  a  well-known 
equivalent,  and  there  is  no  invention  in  api)lying  to  a  main 
shaft  the  same  mechanism  whieh  was  formerly  applied  to  a 
countershaft.     (C.  C,  D.  Mass.     Feb.  24,  1899.) 
Brown,  J.     *  Parsons  v.  Seelye,  92  Fed.  Rep.  1005. 
IX.   Novelty  Without  Invention. 
(g)  Particular  Cases. 

1.  A  pliable  metallic  capsule  for  bottles  having  applied  to 
its  inner  surface  a  coating  of  material  which  becomes  adhesive 
when  moistened.  Held,  to  be  not  patentable,  as  cemented  appli- 
ances— such  as  envelopes,  labels  and  postage-stamps — requiring 
merely  the  application  of  moisture  to  put  them  into  use  are  old. 
(C.  A.  D.  C.     Dec.  9,  1898.) 

Morris,  J.]      *Nimmy  r.    Commissioner  of  Patents,  8G  0.  G. 
345.  ^ 

2.  Mere  cheapness  is  not  patentable.  Cheap  boxes  have  been 
made  from  time  immemorial,  and  it  is  no  new  thing  and  in- 
volves no  patentable  invention,  to  make  a  box  so  cheap  that  it 
may  be  better  thrown  away  or  used  to  kindle  a  fire  than  to  re- 
ship,  and  whether  a  box  shall  be  made  slightly  and  cheaply  so 
as  to  be  thrown  away  after  one  shipment,  or  more  permanently 
and  substantially  at  a  greater  cost,  so  as  to  be  used  in  many 
shipments,  is  a  question  of  construction  and  good,  prudent 
business  management,  rather  than  of  invention.  (C.  C.  A., 
7th  Cir.     Feb.  16,  1899.) 

BuNN,  J.]     *Schrei  et  al.  v.  Morris  et  al,  91  Fed.  Rep.  992. 

3.  Where  the  art  discloses  that  an  open  looj)  without  an  anti- 
friction roller  in  over-check  guides  for  bridles  Avas  old,  and  a 
closed  loop  with  an  anti-friction  roller  was  also  old,  Ilehl,  that 
no  invention  was  involved  in  combining  the  two  to  produce  an 
open  loop  with  the  anti-friction  roller.  (C.  C,  N.  D.  N.  Y. 
Apr.  12,  1899.) 

CoxE,  J.]     *  Smith  v.  Maxwell,  93  Fed.  Rep.  466. 


202  PATENTS. 

4.  In  a  patent  for  a  safety  valve,  the  only  novelty  covered  by 
the  claim  in  issue  is  the  extension  upward  within  and  through 
the  top  of  the  valve  case,  and  above  the  mufller,  of  means  for 
controlling  from  the  outside  the  regulating  device.  The  thought 
involved  in  the  mere  idea  of  having  some  contrivance  by  which 
any  interior  work  can  be  controlled  by  a  rod  extending  exter- 
iorly, thus  avoiding  the  necessity  of  taking  apart,  is  a  primary 
one  in  all  the  arts  ;  S(;  that  the  suggestion  of  making  such  a 
connection  in  this  case  clearly  involved  no  invention.  (C.  C. 
A.,  IstCir.      May  4,  1899.) 

Putnam,  J.]     *  Crosby  Steam   Gauge  &  Valve  Co.  v.   Ashton 
Valve  Co.,  94  Fed.  Rep.  516. 

5.  The  substitution  of  a  frame  of  buckram  and  coarse  cloth 
for  a  wire  and  gauze  frame,  for  a  hat  support  used  in  trunks  and 
hat-boxes  whereby  the  hat  may  be  securely  fastened  and  held 
by  a  hat-pin  does  not  rise  to  the  dignity  of  patentable  invention. 
(C.  C,  S.  D.  N.  Y.     May  28,  1899.) 

Shipman,  J.]     *  Lyons  v.  Bi.shop  et  a/.,  95  Fed.  Rep.  154. 

Patents. 

I.   In  General. 

II.   Presumption  of  Validity. 

III.  Defective  or  Void. 

IV.  Construction  of. 

(a)  In  General. 

(b)  Liberal  or  Broad. 

(c)  By  Draivings. 

(d)  By  Specification. 

(e)  By  State  of  the  Art. 

V.   Claims. 

(a)  Ambiguous,  Hoio  Construed. 

(b)  For  Combination. 

(c)  For  Specific  Element  of  Combination. 

(d)  Limited  by  Amend.ment  in  Patent  Office. 

(e)  Limited  by  their  Terms. 

(/)    ^^  Substanticdly  as  Described,^'  etc. 
VI.   Correction  of. 

(a)   By  Certificate  of  Correction. 


PATENTS.  203 

(b)   Bi/  Reissue. 
VII.   Limitation  of,  by  Foreign  Patents. 
VIII.  Reissue. 
IX.  Valid  and  Infringed. 
X.   Valid  but  Not  Infringed. 
XI.   Validity  Not  Determined,  Not  Infringed. 
XII.   Void  in  Whole  or  in  Part. 

I.  In  General. 

1.  A  patent  for  an  invention  which  the  patentee  refuses  to 
make  available  himself,  and  refuses  to  allow  others  to  make 
useful,  is  not  within  the  spirit  of  the  constitution,  which  assigns 
as  a  reason  for  securing  exclusive  rights  to  authors  and  inven- 
tors a  desire  "to  promote  the  progress  of  science  and  the  useful 
arts,"  and  patents  so  held  are  entitled  to  scant,  though  neces- 
sarily to  some,  recognition  at  law,  and  to  none  whatever  in 
equity.  They  are  not  the  equivalent  of  a  highly  cultivated 
field,  surveyed,  plotted  and  fenced  in  by  the  owner;  but  they 
constitute,  for  all  useful  purposes,  a  waste  from  which  the  pub- 
lic is  sought  to  be  excluded  for  reasons  of  which  equity  takes 
no  cognizance.      (C.  C,  D.  Mass.     Dec.  22,  1898.) 

Putnam,  J.]     *Evvart  Mfg.  Co.  r.  Baldwin  Cycle  Chain  Co.  et 
ai,  91  Fed.  Rep.  262. 

2.  While  an  improver  may  have  made  it  possible,  through 
his  improvements  of  a  pre-existing  successful  machine,  to  largel}' 
increase  the  capacity  thereof,  yet  by  such  improvement  he 
does  not  entitle  himself  to  the  pre-existing  subject-matter  to 
which  it  related.      (C.  C.  A.,  3d  Cir.     Jan.  25,  1899.) 

Dallas,  J.]     *Ginna  et  al.  v.  Mersereau  Mfg.  Co.,  92  Fed  Rep. 
369. 

II.  Presumption  of  Validity. 

1.  Where  two  patents  apparently  describe  the  same  art  or 
article,  the  question  of  identity  is  open  for  examination,  with 
the  presumption  in  favor  of  their  diversity.  Rob.  Pat.  §  896. 
The  presumption  is  that  the  patentee  invented  something  new, 
or  he  would  not  have  secured  the  second  patent.  (C.  C.  A., 
9th  Cir.  Oct.  24,  1898.) 
Morrow,  J.]     *  Norton  v.  Jensen,  90  Fed.  Rep.  415. 


204  PATENTS. 

2.  The  rule  that  a  patent  is  'prima  facie  evidence  of  novelty 
and  invention,  is  a  mere  rule  of  evidence,  which,  although  it 
casts  the  burden  of  proof  upon  the  alleged  infringer,  does  not 
take  from  the  courts  authority  to  declare  what  constitutes  nov- 
elty and  invention.  (C.  C,  S.  D.  Cal.  Jan.  30,  1899.) 
Wellborn,  J.]     ^Lettelier  v.  Mann  et  al,  91  Fed.  Rep.  909. 

3.  Where  a  patent  has  been  declared  valid  after  a  protracted 
litigation  it  raises  a  strong  presumption  in  its  favor,  and  new 
alleged  anticipatory  matter  must  clearly  convince  the  court  that 
the  former  decisions  were  wrong.  If  any  doubt  exists  on  this 
point  the  former  adjudications  should  stand.  (C.  C,  D.  Mass. 
Feb.  9,  1899.) 

Colt,  J.]     *  Tripp  Giant  Leveller   Co.  v.  Bresnahan  et  a/.,  92 
Fed.  Rep.  391. 

4.  All  the  elements  of  the  combination  had  been  used  before 
and  the  functions  of  each  were  well  known  in  the  art,  but  it 
does  not  appear  that  they  had  ever  similarly  specifically  com- 
bined for  effecting  the  purpose  accomplished  by  the  device  of  the 
patent.  The  grant  of  the  patent  carries  with  it  the  presumption 
of  patentability  and  this  presumption  is  strengthened  by  the 
general  acceptance  of  the  device,  the  acquiescence  of  those 
skilled  in  the  art  and  their  willingness  to  accept  licenses  there- 
under. (C.  C.  A.,  3d  Cir.  June  8,  1899.) 
KiRKPATRicK,  J.]     *Millheim  Electric  Tel.  Co.  etal  v.  Western 

Electric  Co.,  95  Fed.  Rep.  152. 

III.   Defective  or  Void. 

1.  There  is  no  authority  which  holds  that  a  patent  regularly 
issued  and  valid  on  its  face  can  be  declared  void  because  of  a 
clerical  error  of  an  examiner  in  failing  to  follow  the  local  rules 
of  practice  in  the  Patent  Office.  (C.  C,  N.  D.  N.  Y.  June 
14,  1899.) 

CoxE,  J.]     *  Deere  et  al  v.  Arnold,  95  Fed.  Rep.  169. 

2.  Under  the  authority  of  Ry.  Co.  v.  Sayles,  97  U.  S.  564, 
and  subsequent  cases  it  is  doubtful  if  a  patent,  granted  on  a 
feature  which  did  not  appear  in  the  original  specification,  and 
not  until  some  months  later  by  amendment,  is  valid,  especially 


PATENTS.  205 

where  such  amendment  is  not  sworn  to  by  applicant.      (C.  C, 

D.  Ky.     Junes,  1899.) 

Evans,  J.]     *  Patent  Button  Co.  v.  Pilcher,  95  Fed.  Rep.  479. 

IV.  Construction  of. 
(rt)  In  General. 

1.  Notwithstanding  the  apparent  concessions  of  counsel  on 
each  side  as  to  the  scope  of  the  patent  in  suit,  the  court,  which, 
with  reference  to  questions  so  far  affecting  the  pul)lic  as  those 
of  validity  and  construction  of  patents,  is  not  bound  b\'  stipula- 
tions of  parties,  cannot  accept  their  conclusion  when  the  speci- 
fication of  the  patent  is  clearly  insufficient  to  reach  anything 
be3^ond  what  is  expressly  described  in  it.  (C.  C. ,  D.  ]Me. 
July  30,  1898.) 

Putnam,  J.]  *8imonds  Roller  Mach.  Co.  v.  Hathorn  Mfg.  Co., 
90  Fed.  Rep.  201. 

2.  The  law  intends  that  the  patent  shall  be  preserved,  unless 
the  invalidity  appear  be3'ond  a  reasonable  doubt;  and  when  a 
machine  created  pursuant  to  the  specification  of  letters  patent 
has  reached  in  its  domain  the  greatest  distinction  for  useful  op- 
eration, while  others  who  have  sought  the  same  ends  have  failed 
substantially,  and  when  the  rights  are  of  great  pecuniary  value 
and  have  enlisted  large  financial  undertakings,  a  court  of  equity 
should  not  be  diligent  to  discover  nice  resemblances  to  former 
inventions,  especially  in  behalf  of  a  person  who  had  recognized 
its  validity  through  years  of  service  in  commending  it  to  the 
public,  and  whose  own  signature  acknowledged  its  validity. 
(C.  C,  E.  D.  N.  Y.     Oct.  6,  1898.) 

Thomas,  J.]  *  Morin  v.  Lawler.  Same  ei  al.  v.  Edison  Elec- 
tric Illuminating  Co.  of  Brooklj'n,  90  Fed. 
Rep.  285. 

3.  The  difference  between  a  ])ioneer  inventor  and  an  im- 
prover, in  the  construction  of  patents,  is  very  marked.  An 
original  inventor,  a  pioneer  in  the  art,  he  who  evolves  the  orig- 
inal idea  and  brings  it  to  some  successful,  useful  and  tangible 
result,  is  by  the  law  of  patents  entitled  to  a  broad  and  liberal 
construction  of  his  claims;  whereas  an  improver  is  only  entitled, 
and  justly  so,  to  what  he  claims,  and  nothing  more.     Further- 


206  PATENTS. 

more,  an  application  for  a  patent  which  has  been  rejected  and 
subsequently  amended  to  conform  to  the  objections  of  the  Pat- 
ent OfRce  is  strictly  construed.  (Sargent  y.  Lock  Co.,  114  U. 
S.  63;  5  Sup.  Ct.  1021;  Water  Meter  Co.  v.  Desper,  101  U.  S. 
332;  Gage  v.  Herring,  107  U.  S.  640;  2  Sup.  Ct.  819;  Fay  v. 
Cordesman,  109  U.  S.  408,  420;  3  Sup.  Ct.  236.  (C.  C.  A.,  9th 
Cir.  Oct.  24,  1898.) 
Morrow,  J.]     *  Norton  et  at.  v.  Jensen,  90  Fed.  Rep.  415. 

4.  While  a  feature  of  construction  described  in  the  specifica- 
tion may  be  read  into  the  claims  with  a  view  of  showing  the 
connection  in  which  the  device  is  used,  and  proving  that  it  is 
an  operative  device,  yet  it  may  not  be  done  for  the  purpose  of 
making  out  a  case  of  novelty  or  infringement,  and  where  an  ele- 
ment is  expressly  included  in  one  claim,  it  cannot  be  read  into 
another  claim  where  it  is  not  mentioned.  (C.  C.  A.,  7th  Cir. 
Feb.  16,  1899.) 

W^ooDS,  J.]     *  Wilson  et  al.   r.   McCormick  Harvesting  Mach. 
Co.,  92  Fed  Rep.  167. 

5.  Where  a  claim  is  distinctly,  exclusively  and  broadly  for  a 
new  combination,  there  is  no  authority  or  principle  of  law 
which,  so  reading  it,  would  Avarrant  the  conversion  of  it  by  con- 
struction into  a  claim  for  mere  details.  (C.  C. ,  N.  D.  Cal. 
Jan.  23,  1899.) 

Morrow,  J.]     *Risdon  Iron  &  Locomotive  W'ks.  v.  Trent,  92 
Fed.  Rep.  375. 

6.  The  more  meritorious  the  invention,  the  greater  the  step 
in  the  art,  the  less  the  suggestion  of  the  improvement  in  the 
prior  art,  the  more  liberal  are  the  courts  in  applying  the  doc- 
trine of  equivalents  in  favor  of  the  patentee.  The  narrower  the 
line  between  the  faculty  exercised  in  inventing  a  device  and  me- 
chanical equivalents,  the  stricter  are  the  courts  in  rejecting  the 
claim  of  equivalents  by  the  patentee  in  respect  of  alleged  in- 
fringements.     (C.  C.  A.,  6th  Cir.     Mar.  7,  1899.) 

Taft,  J.]     ^Penfieldr.  Chambers  Bros.  Co.,  92  Fed.  Rep.  630. 

7.  Where  the  fundamental  rules  of  construction  applicable  to 
ordinary  instruments  solve  the  case  it  is  not  necessary  to  resort 
to  any  of  those  peculiar  and  somewhat  artificial  rules  of  con- 
struction which  are  sometimes  assumed  to  be  appropriate  with 


PATENTS.  207 

reference  to  letters  patent  issued  to  inventors.      (C.  C. ,  D.  Me. 
Mar.  22,  1899.) 

Putnam,  J.]     *  Adams  ct  M'cstlake  Co.  et  al.  v.  E.  T.  Burrowes 
Co.,  93  Fed.  Rep.  462. 

8.  Where  the  language  of  a  claim  is  clear  and  simple  there  is 
no  room  for  construction,  and  such  a  claim  for  an  article  cannot 
be  sustained,  if  to  sustain  it  is  necessary  to  import  into  it  the 
method  or  process  used  in  producing  such  article.  (C.  C. ,  N. 
D.  N.  Y.     Apr.  12,  1899.) 

CoxE,  J.]     *  Lappin   Brake-Shoe  Co.   v.   Corning   Brake-Shoe 
Co.,  94  Fed.  Rep.  162. 

9.  Where  a  patentee  might  have  claimed  a  process,  or  an  arti- 
cle used  in  carrying  out  the  process,  but  has  done  neither,  the 
court  is  prohibited  from  giving  him  a  patent  for  a  product  pro- 
duced by  means  of  an  alleged  ingenious  device,  which  is  not 
even  mentioned  in  the  claim.  Were  the  rule  otherwise  it  would 
be  a  dangerous  menace  to  public  rights,  which  might  be  de- 
stroyed, not  by  the  patent  emanating  from  the  Patent  Office, 
but  by  a  different  patent  subsequently  granted  by  the  court. 

10.  While  the  claims  of  a  patent  are  necessarily  confined  to 
the  specific  combinations. which  they  describe,  yet  their  scope 
should  not  be  so  restricted  as  to  admit  of  the  avoidance  of  in- 
fringement by  resort  to  merely  colorable  and  evasive  variations. 
(C.  C,  E.  D.  Penn.      May  26,  1899.) 

Dallas,  J.]     *  Smith  et  al.  v.  Ulrich,  94  Fed.  Rep.  865. 

11.  In  the  construction  of  a  patent,  the  omission  of  the  pat- 
entee to  point  out  or  refer  in  his  specification  or  claims  to  the 
special  feature  which  he  subsequently  maintains  is  the  most  im- 
portant part  of  his  invention,  is  very  significant  and  should  be 
carefully  scrutinized.  In  McClain  v.  Ortmayer,  57  0.  G.  1229, 
141  U.  S.  419,  12  Sup.  Ct.  76,  the  court  held  : 

"The  object  of  the  patent  law  in  requiring  the  patentee  to  '  particularly  point  out 
and  distinctlj'  claim  the  part,  improvement  or  combination  whicli  lie  regards  as  his 
invention  or  discovery,'  is  not  only  to  secure  to  tiim  all  to  which  he  is  entitled,  but  to 
apprise  the  public  of  what  is  still  open  to  them.  The  claim  is  the  measure  of  his  right 
to  relief." 

(C.  C.  A.,  1st  Cir.,  May  31,  1899.) 

Colt,  J.]     *MacColl  v.  Knowdes  Loom  ^^'orks,  95  Fed.  Rep. 

982.      ■ 


208  PATENTS. 

12.  A  patent  to  the  original  inventor  of  a  machine  which 
first  performs  a  useful  function,  protects  him  against  all 
mechanisms  which  perform  the  same  functions  by  equivalent 
mechanical  devices;  but  a  patent  to  one  who  has  simply  made 
a  slight  improvement  on  a  device  that  performed  the  same  func- 
tion before  as  after  the  improvement  is  protected  only  against 
those  who  use  the  very  improvement  that  he  describes  and 
claims,  or  mere  colorable  evasions  of  it.  (C.  C.  A.,  8th  Cir. 
Oct.  9.  1899.) 

Sanborn,  J.]  *  McBride  v.  Kingman  et.  nl.  Same  v.  Sickels 
et  al.  Same  v.  Randall  et  al.  Same  v.  Ains- 
worth  ct  al,  97  Fed.  Rep.  217. 

13.  The  statute  requires  the  inventor  to  particularly  point  out 
and  distinctly  claim  the  improvement  or  combination  which  he 
claims  as  his  discovery.  R.  S.  §  4888.  When  under  this 
statute  the  inventor  has  made  his  claims  he  has  therel)y  dis- 
claimed and  dedicated  to  the  public  all  other  combinations  and 
improvements  apparent  from  his  specification  and  claims  that 
are  not  mere  evasions  of  the  device,  combination  or  improve- 
ment, which  he  claims  as  his  own.  While  the  patent  is  notice 
of  the  claims  which  it  contains  and  allows,  it  constitutes  an 
estoppel  of  the  patentee  from  claiming  under  that  or  any  subse- 
quent patent  any  combination  or  improvement  there  shown 
which  he  has  not  clearly  pointed  out  and  distinctly  claimed  as 
his  discovery  or  invention  when  he  received  his  patent.  It  is 
a  complete  and  a  legal  notice  to  every  one — notice  on  which 
every  one  has  a  right  to  rely — that  he  may  freely  use  su(!h  im- 
provements and  combinations  without  claim  or  molestation 
from  the  patentee.  It  would  constitute  rank  injustice  to  permit 
an  inventor,  after  a  combination  or  device  that  he  did  not  dis- 
tinctly claim  in  his  patent  had  gone  into  general  use,  and  years 
after  his  patent  had  been  granted,  to  read  that  combination  into 
one  of  the  claims  of  his  patent  and  to  recover  for  its  infringe- 
ment of  every  one  who  had  used  it  upon  the  faith  of  his 
solemn  declaration  that  he  did  not  claim  it.  ^  Id. 

IV.   Construction  of. 

(/;)   Liberal  or  Broad. 
1.   It  is  of  no  legal  consequence  that  a  patentee  fails  to  ex- 


PATENTS. 


209 


plain  the  physical  laws  of  which  he  makes  use  in  tlie  ])ractice 
of  his  invention,  l)ecause  an  inventor  is  not  de})rived  of  the 
fruits  of  his  genius  hy  the  fact,  if  it  exists,  that  he  is  neither  a 
mathematician  nor  a  jjliysicist.  (C.  C,  D.  Me.  July  .30, 
1898. ) 

Putnam,  J.]     *Sinionds  Rolling.   ]Mach.  Co.  r.  Hathorn  Mfg. 
Co.,  90  Fed.  Rep.,  201. 

2.  While  it  is  the  ordinary  rule,  often  stated,  that  a  ])atentce 
is  entitled  to  claim  all  the  uses  and  advantages  Avhich  helong  to 
his  patent,  whether  foreseen  by  him  or  not,  yet  this  is  limited 
so  as  to  exclude  uses  which  require  further  exercise  of  the  in- 
ventive faculty,  and  uses  the  means  for  accomplishing  which 
are  not  so  indicated  in  the  specification  as  to  make  them  avail- 
able to  persons  of  ordinary  skill  in  art.  */rf. 

3.  It  is  not  enough  that  a  patent  suggests  an  object  to  be  ac- 
complished, if  it  does  not  also  suggest  or  point  out  practically 
the  means  for  its  accomplishment.  (Citing  Gordon  v.  Warder, 
150  U.  S.  47,  50;  14  Sup.  Ct.  32.)  */d 

4.  Where  a  patentee's  contribution  to  the  art  constituted  an 
invention,  not  a  great  or  primary  invention,  but  yet  a  distinct 
advance  in  an  art  crowded  with  skilled  mechanics,  the  court 
should  uphold  his  patent.  (C.  C,  S.  D.  N.  Y.  Nov.  15, 
1898. ) 

CoxE,  J.]     *Gormully  &  J.  Mg.  Co.  v.  Stanley  Cycle  Mfg.  Co. 
etal.,  90  Fed.  Rep.  279. 

5.  The  rule  that  an  inventor  of  a  machine  is  entitled  to  the 
benefit  of  all  the  uses  to  which  it  can  be  put,  whether  he  knew 
of  them  or  not,  cannot  operate  to  sw^eep  within  the  patent 
structures  which  do  not  embody  the  invention  claimed  and 
only  rtsemble  some  of  its  subordinate  features,  and  to  infringe 
the  defendant  must  use  the  invention  which  the  patentee  has 
described  and  claimed.  (C.  C,  S.  D.  N.  Y.,  Nov.  15,  1898.) 
CoxE,  J.]     *  Palmer  et  al.  v.  De  Yongh,  90  Fed.  Rep.  281. 

6.  Where  it  appears  that  a  patented  process  has  proved  com- 
mercially successful,  and  not  only  revolutionized  the  art  to 
which  it  pertains  both  as  to  time  saved  and  to  superior  product, 
but  also  has  resulted  in  disi)la(ing  other  processes  of  a  similar 

14 


210  PATENTS, 

nature,  the  court  is  disposed  to  sustain  it,  unless  it  is  clearly  in- 
valid under  the  law.  Nor  does  it  detract  from  the  merit  of 
such  an  invention  that  prior  inventions  had  nearly  solved  the 
problem  or  had  reached  a  successful  experimental  stage  in  its 
solution.  When  the  prior  art  is  brought  to  bear  upon  any  im- 
portant invention,  this  is  often  found  to  be  the  situation.  (C. 
C,  D.  Mass.  Apr.  7,  1899.) 
Colt,  J.]     *  Tannage  Patent  Co.  v.  Donallan,  93  Fed.  Rep.  811. 

7.  Previous  efforts  and  previous  failures  add  to  the  import- 
ance of  the  work  of  the  successful  inventor  or  discoverer.  A 
process  carefully  conducted  by  a  skilled  expert  may  be  adequate 
to  tan  skins,  and  yet  be  commercially  worthless.  Such  experi- 
mental success  should  have  little  or  no  weight  in  determining 
the  scope  of  a  patent  for  a  commercially  successful  process. 

8.  In  determining  the  question  of  anticipation,  if  the  iden- 
tity of  method  and  result  of  the  patented  device  with  that  of 
the  alleged  anticipatory  matter  is  doubtful,  the  doubt  must  be 
resolved  in  favor  of  the  successful  patentee,  who  has  in  a  prac- 
tical way  materially  advanced  the  art.  (C.  C.  A.,  1st  Cir. 
Apr.  25,  1899.) 

Colt,  J.]     *Simonds  Rolling  Mach.  Co.  v.  Hathorn  Mfg.  Co. 
et  al. 
*  Hathorn  Mfg.  Co.  et  al.  v.  Simonds  Rolling  Mach. 
Co.,  93  Fed.  Rep.  958. 

9.  A  patentee  who  is  the  original  inventor  of  a  device  or 
machine — a  pioneer  in  the  art — is  entitled  to  a  broad  and  lib- 
eral construction  of  his  claims;  but  an  inventor  who  only 
claims  to  be  an  improver  is  only  entitled  to  what  he  claims  and 
nothing  more.  In  other  words,  the  original  inventor  of  a  de- 
vice or  machine  has  the  right  to  treat  as  infringers  all  who  make 
devices  or  machines  operating  on  the  same  principle,  and  per- 
forming the  same  functions  by  analogous  means  or  equivalent 
combinations.  (C.  C.  A.,  9th' Cir.  Feb.  13,  1899.) 
Hawley,   J.]     *  Overweight   Counterbalance  Elevator   Co.    v. 

Improved  Order  of  Red  Men's  Hall  Ass'n  of 
San  Francisco,  94  Fed.  Rep.  155. 

10.  Where  an  inventor  has  devised  a  machine  or  tool  for 


PATENTS 


211 


doing  work  which  had  previously  been  done  by  hand,  and  the 
utihty  of  the  device  is  at  once  recognized  by  the  trade,   the 
court  should  hesitate  to  declare  the  patent  therefor  void  for  want 
of  invention  because  what  was  done  may  be  eflfected  by  the 
moditife'ation  of  an  old  structure  used  for  a  different  purpose. 
(C.  C.  A.,  1st  Cir.     Sept.  14,  1899.) 
Colt,  J.]      *  Reynolds  r.  Buzzell,  90  Fed.  Rep.  997. 
IV.  Construction  of. 
(c)  By  Draivi))gti. 

1.  The  mere  fact  that  a  patent  expressly  shows  a  scale  upon 
which  the  drawings  are  made  is  not  of  a  controlling  character; 
for  it  is  of  little  consequence  whether  the  relative  dimensions  of 
the  parts  of  a  device  are  gathered  from  a  scale  expressly  shown, 
or  from  the  apparent  proportions  indicated  by  the  drawings 
without  a  scale;  and  in  either  event,  the  dimensions  shown  are 
not  to  be  taken  as  elements  in  the  claim,  unless  the  patentee  has 
expressly  limited  himself  within  the  rules  stated  by  the  Court 
of  Appeals  in  Reece  Buttonhole  Mach.  Co.  v.  Globe  Buttonhole 
Machine  Co.,  10  C.  C.  A.  194;  61  Fed.  Rep.  958;  67  0.  G. 
1720;  C.  D.  1894.  (C.  C,  D.  Me.  July  30,  1898.)  . 
Putnam,  J.]     ^Simonds  Rolling  Mach.  Co.  v.   Hathorn  Mfg. 

Co.,  90  Fed.  Rep.  201. 

2.  If  there  be  any  invention,  it  is  not  to  be  found  in  the 
combination  described  in  the  claims,  but  by  reference  to  the 
drawing  and  in  the  words  "substantially  as  described."  This 
would  confine  the  plaintiff  to  a  metallic  frame  divided  longi- 
tudinally into  three  sections,  each  fitted  with  short  rollers,  two 
of  which  project  above  and  forward  of  the  front  bar  of  the 
frame,  which  is  bent  inward  in  front  of  the  middle  section  to 
form  the  "re-entrant  bend  or  recess"  for  the  insertion  of  the 
hand.     (Sup.  Ct.  U.  S.     May  15,  1899.)  ' 

Brown,  J.]     *  Office  Specialty  Mfg.  Co.  v.  Fenton  ^letallie  Mfg. 
Co.,  87  0.  G.  1608. 

IV.   Construction  of. 

(d)  By  the  Specification. 
1.   A  description  of  details,  in  a  specification,  which  the  claim 
does  not  make  elements  of  the  combination,  and  which  are  not 


212  PATENTS. 

essential  to  it,  is  to   be  held  as  only  pointing  out  the  better 
method  of  using  tlie  combination.      (C.  C.  A.,  1st  Cir.      Dec.  9, 
1898. ) 
Putnam,  J.]     *  City  of  Boston  v.  Allen,  91  Fed.  Rep.  248. 

2.  While  the  claim  and  specification  of  a  patent  may  be  read 
together  for  the  purpose  of  l)etter  understanding  the  meaning  of 
the  claim  (Sulphate  Pulp  Co.  v.  Falls  Pulp  Co.,  80  Fed.  Rep. 
395,  405)  the  specification  cannot  be  accepted  as  enlarging  or 
extending  the  invention  stated  in  the  claim  itself.  (C.  C,  D. 
Mass.     Dec.  2,  1898.) 

Aldrich,  J.]      *  Coburn  Trolley-Track   Mfg.  Co.  v.  Chandler  ef 
ai,  91  Fed.  Rep.  260. 

3.  In  construing  a  patent,  if  explanation  is  required,  the  en- 
tire description  of  the  invention  is  applicable  to  a  true  interpret- 
ation of  the  claims.     (C.  C,  N.  D.  Cal.     May  22,  1899.) 
Morrow,  J.]     *  Fruit  Cleaning  Co.   v.    Fresno  Home-Packing 

Co.  et  al,  94  Fed.  Rep.  845. 

4.  The  description  of  non-essentials  in  the  specification  of  a 
patent  merely  amounts  to  a  statement  of  the  better  method  of 
using  the  conibination  claimed.  (C.  C. ,  S.  D.  N.  Y.  June  13, 
1899.) 

TowNSEND,  J.]     *Cimiotti  Unhairing  Co.  et  al.  v.  Bowsky,  95 
Fed.  Rep.  474. 

5.  Where  a  claim  does  not  include  a  particular  element  which 
is  necessary  to  the  operativeness  of  the  invention  as  set  forth  in 
the  specification,  in  order  to  sustain  it  the  court  may  resort  to 
the  specification  and  read  such  element  into  the  claim.  (C.  C. . 
D.  Mass.     July  28,  1899.) 

Brown,  J.]     *  Miller  v.   Mawhinne}^  Last  Co.,  96  Fed.   Rep. 
248. 

IV.   Construction  of. 

(e)  By  State  of  the  Art. 

Where  an  invention  is  not  of  a  primary,  but  of  a  subordinate 

character,  the  claims  of  a  patent  therefor  must  be  limited  to 

the  specific  devices  shown.      (C.  C,  D.  N.  J.     June  20,  1899.) 

Acheson,  J.]     *  Union  Writing  Mach.  Co.  v.  Domestic  Sewing 

Mach.  Co.,  95  Fed.  Rep.  140. 


PATENTS.  213 

V.  Claims. 

(a)  Ambiguous.  How  Construed. 
Where  the  language  of  a  claim,  abstnu'tly  coiisidci-ed,  is  sus- 
ceptible of  either  of  two  constructious,  it  must  bo  read  in  the 
hght  of  the  actual  condition  of  things,  and  if  technical  and 
defining,  the  proper  meaning  -would  be  determined  from  the 
evidence  of  tliose  skilled  in  the  art.  (C.  C,  E.  1).  Penn.  Jan. 
12,  1899.) 
Dallas,  J.]     *Melvin  et  al.  v.  Thomas  Potter,  Sons  &  Co.,  91 

Fed.  Rep.  151. 
V.  Claims. 

(6)    For  Combination. 

1.  A  claim  for  combination  cannot  be  defeated  by  showing 
that  each  of  its  elements,  separately  considered,  was  old.  The 
proof  must  shoAV  that  the  combination  was  old,  and  failure  in 
such  proof  is  irretrievable  failure.  (C.  C. ,  S.  D.  N.  Y.  Nov. 
15,  1898.) 

CoxE,  J.]     *Gormully  &  J.  Mfg.  Co.  r.  Stanley  Cycle  Mfg.  Co. 
et  al,  90  Fed.  Rep.  279. 

2.  While  all  of  the  elements  of  the  claim  of  the  patent  in  suit 
are  contained  in  the  claim  of  a  prior  patent  to  the  same  in- 
ventor, the  latter  patent  has  in  combination  an  additional  mech- 
anism which  is  necessary  to  enable  it  to  accomplish  the  pur- 
pose for  which  it  was  designed.  The  claims  of  the  patents  are 
therefore  not  co-extensive,  and  the  inventor  was  entitled  to  a 
separate  patent  for  each.  Claims  are  not  co-extensive  where 
one  specifies  all  the  features  of  an}'^  or  all  the  parts  of  its  subject, 
while  one  omits  one  of  those  subjects."  (C.  C. ,  D.  N.  Jer. ) 
KiRKPATRiCK,  J.]     *Ryanv.  Newark  Spring  Mattress  Co.,  96 

Fed.  Rep.  lOU. 
V.  Claims. 

(c)  For  Specific  Element  of  a  Combination. 
1.   The  failure  to  claim  a  specific  element  of  a  combination  as 
a  device  by  itself,  is,  in  effect,  an  admission  that  the  particular 
element  is  old  or  Avas  not  invented  by  the  patentee.     (C.  C.  A., 
9th  Cir.     Feb.  13,  1899.) 

Hawley,  J.]  *  Overweight  Counterbalance  Elevator  Co.  v. 
Imp.  Order  of  Red  Men's  Hall  Association 
of  San  Francisco,  94  Fed.  Rep.  155. 


214  PATENTS. 

2.  Every  element  of  a  combination  claim  is  presumed  to  be 
material,  and  it  is  the  comlnnation  of  elements  that  is  pre- 
sumed to  be  new,  and  not  the  elements  themselves,  when  con- 
sidering claims  for  a  combination.  */d. 
Y.   Claims. 

(d)  Limited  by  Amendment  in  Patent  Office. 

1.  "  Limitations  and  provisos  imposed  by  the  inventor,  es- 
pecially such  as  were  introduced  into  the  application  after  it 
had  been  persistently  rejected,  must  be  strictly  construed 
against  the  inventor,  and  in  favor  of  the  public,  and  looked 
upon  in  the  nature  of  disclaimers."  Mr.  Justice  Blatchford  in 
Sargent  v.  Lock  Co.,  114  U.  S.  63,  5  Sup.  Ct.  1021.  (C.  C.  A., 
9th  Cir.     Oct.  24,  1898.) 

MoREOW,  J.]     *  Norton  et  al.  v.  Jensen,  90  Fed.  Rep.  415. 

2.  In  view  of  the  amendment  of  the  specification  and  claims 
to  meet  the  objections — and  it  is  immaterial  whether  those  ob- 
jections were  proper  or  not — of  the  Patent  Office,  the  patentee 
cannot  now  be  heard  to  assert  that  the  amendment  was  imma- 
terial nor  to  insist  upon  a  construction  of  his  claims  which  would 
cover  a  method  of  making  his  device  which  he  was  required  to 
abandon  or  disclaim  for  the  purpose  of  obtaining  favorable 
action  on  his  application.  It  is  too  late  now  to  assert  that  he 
was  entitled  to  his  original  claims,  or  that  the  claims  as  finally 
allowed  are  as  broad  as  the  original  claims.  (Sutter  v.  Robin- 
son, 119  U.  S.  530,  7  Sup.  Ct.  376;  Shepard  v.  Carrigan,  116 
U.  S.  593,  6  Sup.  Ct.  493;  Rubber  Co.  v.  Tire  Co.,  28  U.  S  App. 
470,  515-517,  16  C.  C.  A.,  632,  70  Fed.  Rep.  58,  and  ca&es  there 
cited.)     (C.  C.  A,,  8th  Cir.     Nov.  28,  1898.) 

Thayer,  J.]     *  Brill  v.  St.   Louis  Car  Co.  et  al,  90  Fed.  Rep. 
666. 

3.  Acquiescence  in  a  Patent  Office  rejection  and  amendment 
of  claims  and  specification  amounts  to  a  disclaimer  by  the  pat- 
entee of  matter  eliminated  l)y  such  amendment.  (C.  C. ,  E. 
D.  Mo.  E.  D.     Feb.  7,  1899.) 

Adams,   J.]     *  Michaelis  et  al.  v.    Larkin  et  al,  91   Fed.  Rep. 
778. 

4.  Where  a  patent  is  entitled  to  a  broad  construction,  an 
amendment  of   the  specification   during  the  pendency  of  the 


PATENTS.  215 

application  in  the  Patent  Office,  l\v  striking  out  a  reference  to 
certain  well-known  mechanical  equivalents  for  reversing  motion, 
is  immaterial,  and  does  not  exclude  the  application  of  the  doc- 
trine of  equivalents,  which  doctrine  is  so  effective  that  under 
ordinary  circumstances  it  supersedes  the  usual  rule  of  interpre- 
tation,— Ex-pressio  unius  est  exclusio  alterius.  (C.  C.  A.,  1st  Cir. 
Jan.  30,  1899.) 
Brown,  J.]     *Heap  v.  Greene,  et  al.,  91  Fed.  Rep.  792. 

5.  Where  the  Patent  Office  rejects  a  claim  covering  a  certain 
device,  on  its  merits,  and  such  rejection  is  acquiesced  in,  and  the 
patent  issues,  the  patentee  cannot  afterwards  be  allowed  a  con- 
struction of  the  other  allowed  claims  broad  enough  to  cover  the 
claim  which  was  rejected.  (C.  C.  A.,  6th  Cir.  May  2,  1899.) 
LuRTON,  J.]     *Bundy  JM'f'g  Co.  v.  Detroit  Time-Register  Co., 

94  Fed.  Rep.  524. 

6.  To  be  estopped  by  the  action  of  the  Patent  Office,  the 
patentee  must  be  shown  to  have  surrendered  something  which 
he  now  claims  in  order  to  obtain  that  which  was  allowed. 

7.  The  estoppel  which  arises  when  claims  are  limited  by 
amendment  to  meet  the  rulings  of  the  Patent  Office,  is  in  the 
nature  of  esto})pel  by  contract,  not  equitable  estoppel  or  estop- 
pel in  pais,  and  its  scope  in  a  jtarticular  case,  like  the  meaning 
of  a  contract,  is  a  matter  of  interpretation  and  construction  of 
the  terms  used  according  to  their  fair  meaning.  (C.  C.  A., 
7th  Cir.     Oct.  3,  1899.) 

\\'ooDS,  J.]     *  Magic  Light  Co.  v.  Economy  Gas-Lamp  Co. ,  97 

Fed.  Rep.  87. 
V.  Claims. 

(e)  Liriiited  hi/  their  Terms. 
The  law  requires  the  applicant  for  a  patent  to  make  S])ecific 
claim  or  claims  defining  his  invention  for  the  information  of  the 
public,  and  when  so  made  and  granted  it  cannot  be  enlarged  in 
his  interest  l)eyond  the  plain  import  of  its  terms.  When  neces- 
sary to  its  understanding,  the  specification  and  drawings,  if  any, 
may  be  resorted  to.  The  claim  may  also  be  limited  by  the 
specification  when  such  is  the  necessary  effect  of  its  recitals  and 
its  true  meaning  ascertained  from  the  context.     (Tilghman  v. 


216  PATENTS. 

Proctor,  19  0.  G.  859;  102  U.  S.  707,  721,  728;  Howe  Machine 
Co.  V.  National  Needle  Co.,  51  0.  G.  475;  134  U.  S.  388,  394; 
White  V.  Dunbar,  37  0.  G.  1002;  119  U.  8.  47,  51;  McLain  v. 
Ortmayer,  57  0.  G.  1129;  141  U.  S.  419,  425;  Celluloid  Mfg. 
Co.  V.  Arlington  Mfg.  Co.,  C.  D.  1893,  483,  488;  64  0.  G. 
1263.)  (C.  A.  D.  C.  May  4,  1899.) 
Shepard,  J.]  *Reute  v.  Elwell,  87  0.  G.  2119. 
V.  Claims. 

(/)    ^'  Substantially  as  Described,^ ^  etc. 

1.  The  words  "herein  described"  are  more  positive  in  their 
effect  than  the  ordinary  expression,  "substantially  as  de- 
scribed" or  "substantially  as  set  forth;"  and  even  these  latter 
expressions  have,  in  many  cases,  been  held  to  limit  a  claim, 
and  sometimes  to  save  it.  (C.  C.,  D.  Me.  July  30,  1898.) 
Putnam,  J.]     *Simonds  Rolling  Mach.   Co.  v.   Hathorn  Mfg. 

Co.,  90  Fed.  Pvep.  201. 

2.  The  "yoke-shaped  axle-box  pedestals,  C,"  referred  to  in 
the  claim  are  the  pedestals  which,  in  every  instance,  are  de- 
scribed in  the  specification  as  extending  below  the  axle-boxes. 
The  words  "substantially  asset  forth,"  with  which  the  claim 
concludes,  refer  to  the  specification,  and  make  the  description 
of  the  housings  therein  contained  an  essential  part  of  the  claim. 
"General  language  in  a  claim  which  points  to  an  element  or 
device  more  fully  described  in  the  specification  is  limited  to 
such  an  element  or  device  as  is  there  described."  (Adams 
Elec.  Ry.  Co.  v.  Lindell  Ry.  Co.,  40  U.  S.  App.  482,  512,  23 
C.  C.  A.  223,  77  Fed.  Rep.  432-439;  Mitchell  v.  Tilghman,  19 
Wall.  287;  Sterratt  v  Mfg.  Co.,  27  U.  S.  App.  13,  47,  10  C.  C. 
A.  216,  61  Fed.  Rep.  980.)  (C.  C.  A.,  8th  Cir.  Nov.  28, 
1898.) 

Thayer,  J.]     *  Brill  r.   8t.  Louis  Car  Co.  ct  al,  90  Fed.  Rep. 
666. 

3.  The  words  "substantially  as  specified"  have  been  uni- 
formly held  to  import  into  the  claim  the  particulars  of  the 
specification  and  the  court  is  not  at  liberty  to  disregard  what 
the  patentee  terms  one  of  the  most  important  features  of  his 
invention  without  unduly  extending  the  claim.  (C.  C,  D. 
Mass.     Feb.  24,  1899.) 

Brown,  J.]     *  Parsons  v.  Seelye,  92  Fed.  Rep.  1005. 


PATENTS.  217 

4.  Ex])ress  phraseology,  commencing  with  the  closing  words 
of  the  claim  (substantially  as  and  for  the  purpose  set  forth) 
connected  through  the  specifications,  with  the  drawings  is  as 
effectual  as  though  everything  contained  in  the  specification 
and  drawing  were  set  out  in  the  claims.  On  the  general  and 
natural  rules  of  construction  it  is  impossible  to  reject  what  is 
expressl}^  inserted,  and  clear  language  must  prevail  over  doubts 
incidentally  raised.      (C.  C,  D.  Me.     Mar.  22,  1.S99.) 

Putnam,  .J.]     *  Adams  &  Westlake  Co.  et  al.  v.  E.  T.  Burrowes 
Co. ,  93  Fed.  Rep.  462. 

5.  If  a  claim  of  a  patent  contain  the  phrase  "substantially 
as  described  "  or  its  equivalent,  the  entire  specification  is  en- 
titled to  be  considered  in  connection  with  the  claim.  (C.  C. , 
N.  D.  Cal.  May  22,  1899.) 

Morrow,  J.]     *  Fruit  Cleaning  Co.   v.   Fresno  Home-Packing 
Co.  etal.,  94  Fed.  Rep.  845. 

VI.  Correction  of. 

(a)  By  Certificate  of  Correction. 

1.  As  certificates  of  correction  are  granted  by  the  office  only 
for  the  purpose  of  correcting  a  discrepency  between  the  patent 
as  printed  and  the  record,  Held,  that  no  mistake  was  made  in 
omitting  the  place  of  incorporation  of  a  company  which  appears 
as  assignee  of  record  and  to  which  the  patent  was  granted,  and 
a  petition  requesting  a  certificate  of  correction  stating  that  the 
patent  should  have  been  issued  to  said  company,  "a  corpora- 
tion organized  under  the  laws  of  the  state  of  New  Jersey," 
denied,  as  the  uniform  practice  of  the  office  had  been  followed. 
(Apr.  4,  1899.) 

DuELL,  C]     III  re  Lamson  Consolidated  Stove  Service  Co.,  66 
MS.  Dec.  437. 

2.  Where  the  examiner  had  criticised  one  of  the  claims  of  an 
applicant,  and  in  view  of  such  criticism  applicant  had  amended 
the  claim  to  read  as  it  appeared  in  the  i)atent.  Held,  that  a 
reissue  could  not  be  granted  at  the  expense  of  the  Office,  and  a 
certificate  of  correction  could  not  be  granted  because  the  patent 
as  printed  corresponded  to  the  records  of  the  Office,  and  certifi- 


218  PATENTS. 

cates  of  correction  are  granted  only  to  correct  an  error  made  by 

the  Office.      (Sept.  15,  1899.) 

DuELL,  C]      In  re  Moses  S.  Okun,  67  MS.  Dec.  429. 

3.  It  is  the  practice  of  the  Office  to  issue  certificates  of  correc- 
tion only  for  the  purpose  of  making  the  patent  as  issued  corres- 
pond  to  the  record  of   the  case  and   not   for  the  purpose  of 
correcting  mistakes  of  an  applicant.      (Apr.  10,  1899.) 
DuELL,  C]      Ex  parte  Burson,  87  0.  G.  698. 

4.  Where  the  Office  in  amending  a  claim  literally  followed  the 
directions  given  by  an  applicant,  Held,  if  there  is  any  mistake 
or  ambiguity  in  the  claim  it  cannot  be  said  that  such  mistake 
was  incurred  through  the  fault  of  the  Office,  and  certificate  of 
correction  should  be  refused.  Id. 

5.  Where  the  Office  did  not  notify  the  interested  parties  that 
the  request  to  issue  a  patent  to  an  alleged  assignee  would  not  be 
granted,  because  the  Office  did  not  consider  the  instruments  as 
conveying  such  interest  as  Avould  authorize  the  issuing  of  the 
patent  as  requested.  Held,  that  this  is  not  sufficient  ground  to 
warrant  the  issue  of  a  certificate  of  correction,  as  the  parties  are 
presumed  to  know  the  rules  and  practice  of  the  Office.  (Oct.  5, 
1899.) 

DuELL,  C]     Ex  parte  Rosback,  89  0.  G.  705. 

6.  Certificates  of  correction  of  patents  are  issued  only  for  the 
purpose  of  making  the  patent  when  issued  correspond  to  the 
records  of  the  Office.  Id. 

VI.  Correction  of. 

(6)  By  Reissue. 

1.  If  by  reason  of  inadvertence  or  mistake  in  the  drawings 
or  specification,  a  patent  is  rendered  in  part  inoperative,  and 
the  patentee  promptly  applies  for  a  reissue,  and  no  substantial 
rights  are  affected,  or  fraudulent  intent  charged,  the  Commis- 
sioner has  the  right  under  §  4916  R.  S.  to  cause  a  new  patent 
to  issue,  and  under  such  circumstances  his  decision  is  conclu- 
sive.    (C.  C.  A.,  IstCir.     Feb.  13.  1899.) 

Colt,  J.]     *  Beach  v.  Hobbs  et  al.     Hobbs  et  al.  v.  Beach,  92 
Fed.  Rep.  146;  87  0.  G.  1961. 

2.  Where  a  reissue  was  granted  to  correct  the  error  of  a  single 


PATENTS.  219 

word  in  the  specification  (by  changing  "hole"  to  "slot"),  and 
a  corresponding  modification  was  made  in  a  single  feature  of 
one  of  the  eleven  figures  illustrating  the  patent,  the  error  hav- 
ing been  caused  by  oversight  and  being  in  no  way  connected 
with  the  gist  of  the  invention,  though  its  adoption  rendered  the 
machine  inoperative  (no  change  was  made  or  needed  in  the 
claim),  Held,  that  if  the  patentee  made  a  meritorious  in- 
vention, he  ought  not  to  lose  the  benefit  of  it  by  reason  of 
a  defect  so  narrow  and  technical.  (C.  C.  A.,  1st  Cir.  ^lar. 
13,  1899.) 

Lowell,  J.]     *Hart  &  Hageman  INIfg.  Co.  v.  Anchor  Electric 
Co.  etal,  92  Fed.  Rep.  657. 

VII.   Limitation  of,  by  Foreign  Patent. 

1.  Where  a  French  patent  was  granted  for  a  term  of  fifteen 
years  before  the  date  of  application  for  the  United  States  patent 
for  the  same  invention  and  the  French  patent  was  in  full  force 
at  that  date,  but  lapsed  for  the  non-payment  of  annuity  before 
the  United  States  patent  issued.  Held,  that  there  was  no  bar  to 
the  issue  of  the  United  States  patent  under  section  4887,  Re- 
vised Statutes.      (C.  C.  A.,  2d  Cir.     Apr.  4,  1899.) 

Shipman,  J.]  *Welsbach  Light  Co.  v.  Apollo  Incandescent 
Gaslight  Co.,  et  ai,  87  0.  G.,  1784;  96 
Fed.  Rep.  332. 

2.  When  a  foreign  patent  is  allowed  to  lapse  by  reason  of  non- 
compliance with  some  statutory  provision  before  application  is 
made  in  the  United  States,  the  grant  of  a  patent  in  the  United 
States  is  not  prohibited  by  section  4887  of  the  Revised  Statutes, 
but  such  patent  is  invalid  under  a  different  section  on  the 
ground  of  abandonment  of  the  invention  before  the  application 
was  filed.  */r/. 

3.  "To  expire  at  the  same  time"  in  section  4887,  Revised 
Statutes,  should  be  taken  to  mean  that  the  United  States  patent 
expires  at  the  end  of  the  term  prescribed  in  the  i)revious  foreign 
patent  without  regard  to  mishaps  occurring  after  the  apjjlication 
was  filed  in  this  country,  since  the  applicant  was  at  that  time 
entitled  to  his  patent  and  could  then  have  obtained  it  if  the 
Office  could  have  been  more  prompt.  */(i. 


220  PATENTS. 

VIII.  Reissue. 

Where,  12  years  after  the  grant  of  a  patent,  it  was  held  to  be 
invalid  and  was  subsequent!}'  reissued,  and  in  the  meantime  and 
prior  to  the  adjudication  and  reissue,  other  patents  had  been 
granted  for  devices  which  are  covered  by  the  reissue  claims, 
which  devices  have  been  in  extensive  public  use,  Hdd,  that  in 
view  of  the  intervening  private  and  public  rights  which  have 
sprung  up  and  the  unreasonable  delay  in  applying  for  the  re- 
issue, the  said  reissue  must  be  held  to  be  invalid.  (C.  C.  A., 
3d  Cir.     Dec.  31,  1898.  ) 

AcHESON,  J.]     *  Horn  &  Brannen  Mfg.  Co.   v.  Pelzer,  91  Fed. 
Rep.  665. 

(Butler,  J,,  dissented  on  the  ground  that  the  decision  in 
Maitland  v.  Mfg.  Co.,  29  C.  C.  A.  607,  86  Fed.  Rep.  124,  85  0. 
G.  776.  Sand.  Pat.  Dig.  1898,  129,  by  this  Circuit  Court  of 
Appeals  for  the  second  circuit  should  control,  inasmuch  as  the 
proofs  were  the  same  in  both  cases,  and  the  defendant  in  the 
present  case  was  associated  in  the  other  case. ) 

IX.  Valid  and  Infringed. 

1.  The  Simonds  patents  No.  319,754,  granted  June  9,  1885, 
for  improvements  in  faces  for  car-axle  dies,  and  No.  419,292, 
granted  Jan.  14,  1890,  for  a  method  of  making  rolled-metal 
forgings  that  are  circular  in  cross-sectional  area,  Held,  valid  and 
infringed.     (C.  C,  D.  Me.     July  30,  1898.) 

Putnam,  J.]      *  Simonds   Rolling  Mach.    Co.  v.   Hathorn  Mfg. 
Co.  et  «/.,  90  Fed.  Rep.  201. 

2.  Patent  No.  398,158,  Feb.  19,  1889,  to  T.  B.  Jeffery,  for 
improvements  in  velocipedes.  Held,  valid  and  infringed.  (C. 
C,  S.  D.  N.  Y.     Nov.  15,  1898.) 

CoxE,  J.]     *  Gormully  &  Jeffery  Mfg.  Co.  v.  Stanley  Cycle  Mfg. 
Co.  etal,  90  Fed.  Rep.  279. 

3.  Patent  No.  309,727,  Dec.  23,  1884,  to  T.  F.  Morrin  and 
W.  W.  Scott,  for  improvements  in  steam  generators.  Held, 
valid,  not  anticipated,  and  infringed  as  to  claim  2. 

Patent  No.  463,307,  Nov.  17,  1891,  to  T.  F.  Morrin  for  im- 
provements in  steam  generators.  Held,  valid,  not  anticipated, 
and  infringed  as  to  claims  1  and  2. 


PATENTS.  221 

Patent  No.  463,308,  Nov.  17,  1891,  to  T.  F.  ]\rorrin,  for  im- 
provements in  sectional  casinfrs  for  steam  generators,  Held, 
valid,  not  anticipated  and  infringed.  (C.  C,  E.  D.  N.  Y. 
Oct.  6,  1898.) 

Thomas,  J.]  ^Morrinr.  Lawler.  Same  r<  a/.  Edison  Electric 
Illuminating  Co.  of  Brooklyn,  90  Fed.  Rep. 
285. 

4'.  On  the  authority  of  \\'ilgus  r.  Germain  et  al.,  44  U.  S. 
App.;  19  C.  C.  A.  188;  72  Fed.  Rep.  778,  that  patent  to  Wil- 
gus.  No.  443,734,  Dec.  30,  1890,  for  "improvements  in  lawn 
sprinklers,"  was  a  mere  adaptation  of  the  device  of  the  patent 
to  Gauthier,  No.  386,121,  July  7,  1888,  Held,  that  articles  made 
in  conformity  with  said  Wilgus  patent  are  substantial  copies  of 
the  device  of,  and  infringe  said  Gauthier  patent.  (C.  C. ,  S.  D. 
Cal..  Nov.  21,  1898.) 
Ross,  J.]     *  Newton  Mfg.  Co.  v.  Wilgus,  90  Fed.  Rep.  483. 

5.  The  patent  to  Brahn  No.  248,990,  Nov.  1,  1881,  for  an 
improvement  in  railway  switches  (though  not  of  the  highest 
order,  yet  was  new  and  useful  and  involved  invention),  Held, 
valid  and  infringed  by  the  switch  bar  made  under  patent  No. 
308,378.     (C.  C.  A.,  3d  Cir.     Nov.  28,  1898.) 

AcHESON,  J.]     *  Pennsylvania  Steel  Co.,  et  al.  v.  Vermily«,  90 
Fed.  Rep.  498. 

6.  The  patent  to  King  No.  397,296,  Feb.  5,  1899,  for  an 
improvement  in  compounds  to  restrain  the  setting  of  ])laster, 
Held  valid,  not  anticipated  and  infringed.  (C.  C,  S.  D.  N.  Y. 
Dec.  5,  18980 

CoxE,  J.]     *King  et  al.  r.  Anderson  et  al,  90  Fed.  Rep.  500. 

7.  The  patent  to  Tower  No.  378,228,  Feb.  21,  1888,  for  a 
pen-holder  with  a  cork  sleeve,  Held  valid,  and  infringed. 
(C.  C,  S.  D.  N.  Y.     Nov.  19,  1898.) 

Wheeler,  J.]     *  Tower  v.  Eagle  Pencil  Co.,  90  Fed.  Rep.  663. 

8.  The  patent  to  Hayes  No.   310,276,  Jan.  6,  1885,  for  an 
improvement  in  ranges  and  stoves.     Held  valid  not  anticipated 
and  infringed.      (C.  C.  A.,  8(1  Cir.      Nov.  28,  1898.) 
AcHESON,  J.]     *  Thomas  Rol^erts  Stevenson  Co.   r.    ]\IcFassel, 

90  Fed.  Rep.  707. 


222  PATENTS. 

9.  The  patent  to  Bisler  No.  525,941,  Sept.  11,  1894,  for  an 
apparatus  for  playing  duplicate  whist.  Held,  valid  and  in- 
fringed as  to  claims  1,  2  and  4.     (C.  C,  S.  D.  N.  Y.     Nov. 

23,  1898.) 

Wheeler,  J.]     *  United  States  Playing-Card  Co.  v.  Spalding 
etal,  90  Fed.  Rep.  729. 

10.  The  patent  to  Bell  &  Tainter,  No.  341,214,  May  14, 
1886,  for  an  improvement  in  recording  and  reproducing  speech. 
Held,  valid  and  infringed  as  to  claim  21,  on  motion  for  prelim- 
inary injunction.  (C.  C,  S.  D.  N.  Y.  Dec.  10,  1898.) 
Lacombe,  J.]  *  American  Graphophone  Co.  v.  National  Gramo- 
phone Co.  et  al,  90  Fed.  Rep.  824. 

11.  The  patent  to  Condict,  No.  393,323,  Dec.  4,  1888,  for  an 
improvement  in  switches  for  electric  motors,  Held  valid,  not 
anticipated  and  infringed  as  to  claims  20,  21,  22,  27,  28,  29  and 
31,  on  appeal  from  an  order  directing  a  preliminary  injunction. 
(C.  C.  A.,  2d  Cir.     Dec.  7,  1898.) 

Shipman,  J.]     *  Electric  Car  Co.   of  America  et  al.  v.  Nassau 
Electric  R.  Co.,  91  Fed.  Rep.  142. 

12.  The  patent  to  Melvin,  No.  412,279,  Oct.  8,  1889,  for  a 
process  of  manufacturing  linoleum  floor-cloth,  Held,  to  disclose 
a  patentable  invention,  valid,  not  anticipated  and  infringed. 
(C.  C,  E.  D.  Penn.     Jan.  12,  1899.) 

Dallas,  J.]     *  Melvin  et  al.  v.  Thomas  Potter,  Sons  &  Co.,  91 
Fed.  Rep.  151. 

13.  The  design  patented  to  Hill,  No.  27,272,  June  29,  1897, 
for  a  design  for  a  furniture  support.  Held  valid  on  demurrer. 
(C.  C,  D.  Mass.     Dec.  5,  1898.) 

BbgWxX,  J.]     *  Chandler  Adjustable  Chair  &  Desk  Co.  v.  Hey- 
wood  Bros,  et  Wakefield  Co. ,  91  Fed.  Rep.  163. 

14.  The  patent  to  Bowers,  No.  318,859,  May  26,  1885,  for  a 
dredging  machine  as  to  claims  9,  10,  11,  12,  16,  22,  25,  53,  54, 
59  and  87;  No.  318,860,  May  26,  1885,  for  the  art  of  dredging, 
as  to  claims  3  and  5,  and  No.  372,956,  Nov.  8,  1887,  for  an 
excavator,  as  to  claims  1,  12,  13  and  15,  Held  valid,  not  antici- 
pated and  infringed.  (C.  C,  N.  D.  Cal.  Dec.  12,  1898.) 
Morrow,  J.]     *  Bowers  v.  San  Francisco  Bridge  Co.,  91  Fed. 

Rep.  381. 


PATENTS.  223 

15.  The  Hochstedt  et  al.  patents,  No.  352,869,  Nov.  16, 
1886,  and  No.  354,060,  Dec.  7,  1886,  and  tlie  Rettig  patent, 
No.  354,935,  Dec.  28,  1886,  all  for  improvements  in  type- 
casting machines.  Held  valid,  not  anticipated  by  the  patent  to 
Mason,  No.  187,880,  Feb.  27,  1877,  and  infringed.  (C.  C, 
S.  D.  N.  Y.,  Dec.  16,  1898.) 

Wheeler,  J.]     *  Nelson  et  al.  v.  Farmer  Type-Founding  Co. 
etai,  91  Fed.  Rep.  418. 

16.  The  patent  to  Hyatt,  No.  293,740,  Feb.  14,  1884,  for  an 
improvement  in  the  art  of  filtration  of  water.  Held  valid,  and 
infringed  on  motion  for  preliminary  injunction  in  each  case. 
(C.  C,  S.  D.  N.  Y.  Feb.  26,  1898.)  1st  case.  (C.  C,  E.  D. 
Mo.  E.  D.     Dec.  27,  1898. )     2d  case. 

Lacombe,  J.]     *New  York  Filter  Mfg.  Co.  r.  Loomis-Manning 

Filter  Co.,  91  Fed.  Rep.  421. 
Adams,  J.]     *Ne\v  York  Filter  Mfg.   Co.  v.  Jackson,  91  Fed. 
Rep.  422. 

17.  The  patent  to  Warner,  No.  565,867,  Aug.  11,  1896,  for 
a  cut-out  for  electric  motors.  Held,  valid,  not  anticipated  and 
infringed  as  to  claims  1,  2  and  3.  (C.  C,  E.  D.  Wis.  July  5, 
1898.) 

Seaman,  J.]     *  Western  Electric  Co.  v.  American  Rheostat  Co. 
etal.,91  Fed.  Rep.  650. 

18.  The  patent  to  Huntington,  No.  277,134,  May  8,  1883, 
for  a  stone  and  ore-crushing  machine.  Held,  valid  as  to  claim  1 
and  infringed  on  motion  for  preliminary  injunction.  (C.  C,  S. 
D.  N.  Y.     Jan.  23,  1899.) 

Lacombe,  J.]     *  Huntington  Dry  Pulverizer  Co.  v.  Newell  Uni- 
versal Mill  Co.,  91  Fed.  Rep.  661. 

19.  The  patent  to  Bernard,  No.  427,220,  May  6,  1890,  for  an 
improvement  in  pliers.  Held,  valid  and  infringed  as  to  claim  1, 
but  not  infringed  as  to  claim  2.  (C.  C.  A.,  2d  Cir.  Jan.  2, 
1899. ) 

Shipman,  J.]     *  Bridgeport  Mfg.  Co.  et  al.  v.  William  Scholl- 
horn  Co.,  91  Fed.  Rep.  775. 

20.  The  patent  to  Anderson,  No.  250,700,  Dec.  31,  1881,  and 
the  patent  to  McNutt,  No.  378,934,  Mar.  6,  1888,  both  for  ma- 


224  PATENTS. 

chines  for  pointing  skewers,  construed  and  Held,  valid,  the  for- 
mer as  to  claim  1,  and  the  latter  as  to  claim  3.      (C.  C,  E.  D. 
Penn.     Jan.  24,  1899.) 
Dallas,  J.]     *  American  Skewer  Co.  v.  Helms,  91  Fed.  Rep. 

784. 

21.  The  patent  to  Sprague,  No.  324,892,  Aug.  25,  1885,  for 
an  electric  railway  motor.  Held,  valid  and  infringed  as  to  claims 
2  and  4.      (C.  C,  E.  D.  N.  Y.     Jan,  24,  1899.) 

Lacombe,  J.]     *Spragne  Electric  Ry.  and  Motor  Co.  v.  Nassau 
Electric  Ry.  Co.,  91  Fed.  Rep.  786. 

22.  The  patent  to  McEwan  et  al,  No.  492,937,  Mar.  7,  1893, 
for  an  improvement  in  paper-board,  construed  and  Held,  valid 
and  infringed.      (C.  C,  D.  N.  Jer.     Feb.  13,  1899.) 
Beadford,  J.]     *  McEwan  Bros.  Co.  v.  McEwan  et  al.  91  Fed. 

Rep.  787. 

23.  The  patent  to  Grosselin,  No.  377,151,  Jan.  31,  1888,  for 
a  cloth-napping  machine,  Held,  valid  and  infringed.  (C.  C.  A., 
IstCir.     Jan.  30,  1899.) 

Brow^n,  J.     *Heap  v.  Greene  et  al.,  91  Fed.  Rep.  792. 

24.  The  patent  to  Elliott,  No.  350,727,  Oct.  12,  1886,  for  a 
folding  paper,  Held,  valid,  not  anticipated  and  infringed.  (C. 
C,  E.  D.  N.  Y.     Dec.  9,  1898.) 

Thomas,  J.]     *  Whitney  v.  Gair,  91  Fed.  Rep.  905. 

25.  The  patent  to  Grant,  No.  554,675,  Feb.  18,  1896,  for  a 
rubber  tired  wheel.  Held,  valid,  not  anticipated  and  infringed. 
(C.  C,  S.  D.  N.  Y.     Dec.  27,  1898.) 

Thomas,  J.]     *  Rubber  Tire  Wheel  Co.  v.  Columbia  Pneumatic 
Wagon  Wheel  Co.,  91  Fed.  Rep.  978. 

26.  The  reissue  patented  to  Beach,  No.  11,167,  May  26,  1891 
(original  No.  447,225,  Feb.  24,  1891),  for  an  improvement  in 
machines  for  attaching  stays  to  the  corners  of  boxes.  Held  to  be 
for  a  broad  invention  and  entitled  to  cover  known  equivalents  at 
the  date  of  the  patent  and  infringed  as  to  claims  1,  2  and  3. 
(C.  C.  A.,  IstCir.     Feb.  13,  1899.) 

Colt,  J.]     *  Beach  v.  Hobbs  et  al.     Hobbs  et  al.  v.  Beach,  92 
Fed.  Rep.  146. 


PATENTS.  225 

27.  The  reissue  patent  to  Earl,  No.  11,324,  Apr.  18,  1893, 
(original,  No.  465,615,  Dec.  22,  18U1),  for  a  ventilator  and 
combined  ventilator  and  refrigerator  ear,  construed  and  Held, 
not  invalid  because  of  any  expansion  i»ver  the  original  patent, 
and  infringed  by  a  car  made  according  to  patent  to  Kerl)y,  No. 
537,293,  Apr.  9*^  1895.  (C.  C.  A.,  9th  Cir.  Oct.  24,  1897.) 
De  Haven,  J.]     *  Graham  v.  Earl,  82  Fed.  Rep.  737;  92  Fed. 

Rep.  155. 

28.  The  patent  to  Janney,  No.  254.093,  Fel).  21,  1882,  for  an 
improvement  in  car  couplers,  Held,  valid,  not  anticipated  and 
infringed.     (C.  C,  E.  D.  Mo.,  E.  D.     Feb.  14,  1899. ) 
Adams,  .J.]     *McCon\vay  &  Torley  Co.  v.  Shickle,  Harrison  & 

Howard  Iron  Co.^  92  Fed.  Rep.  162. 

29.  The  patent  to  Barley,  No.  256,619,  A])r.  19,  1882,  for  im- 
provements in  harrows.  Held,  valid  and  infringed.  (C.  C. ,  N. 
D.  N.  Y.     Jan.  3,  1899.) 

CoxE,  J.]     ^  Deere  et  (d.  v.  Arnold,  92  Fed.  Rep.  186. 

30.  The  patent  to  Rood  and  Vaughan,  No.  383,918,  June  5, 
1888,  for  improvements  in  machines  for  shaving  hides  or  skins 
covers  a  meritorious  invention,  and  the  claims  should  be  so  con- 
strued as  to  adequately  protect  the  invention,  and  Held,  valid 
and  infringed.      (C.  C,  E.  D.  Penn.     Mar.  6,  1899.) 

Dallas,  J.]     *Rood  et  al.  v.  Evans  et  al,  92  Fed.  Rep.  371. 

31.  The  patent  to  Schierholz,  No.  538,884,  May  7,  1895,  for 
an  ore  crusher,  Held,  to  be  for  a  pioneer  invention,  and  there- 
fore entitled  to  a  broad  range  of  equivalents  and  infringed. 
(C.  C,  N.  D.  Col.     Jan.  23,  1899.) 

Morrow,  J.]     *Risdon  Iron  &  Locomotive  Wks.  v.  Trent,  92 
Fed.  Rep.  375. 

32.  The  patent  to  Cutcheon,  No.  384,893,  June  19,  1888, 
for  improvements  in  machines  for  beating  out  the  soles  of  boots 
and  shoes.  Held,  valid,  not  anticipated  and  infringed.  (C.  C, 
D.  Mass.     Feb.  9,  1899.) 

Colt,  J.]     *  Tripp  Giant  Leveller  Co.  v.   Bresnahan  et  (d.,  92 
Fed.  Rep.  391. 

33.  The  reissue  patent  to  Hart,  No.  11,395  (original  No. 
459,706),  Dec.  12,  1893,  for  electric  snap  switches,  Held,  valid, 

15 


226  PATENTS. 

not  anticipated  and  infringed  by  the  switches  made  in  accord- 
ance with  the  patent  to  Marshall,  No.  547,149,  Oct.  1,  1895. 
(C.  C.  A.,  1st  Cir.     Mar.  13,  1899.) 

Lowell,  J.]     *Hart  &  Hegeman  Mfg.  Co.  v.  Anchor  Electric 
Co.  etal,  92  Fed.  Rep.  657. 

34.  The  patent  to  Chambers,  No.  297,671,  Apr.  29,  1884,  for 
improvements  in  brick  machines,  HeM,  valid  as  to  claim  24  and 
infringed.     (C.  C.  A.,  6th  Cir.     Mar.  7,  1899.) 

Taft,   J.]     *Penfield   r.    Chambers   Bros.   Co.,   92  Fed.    Rep. 
630. 

35.  The  patent  to  Palmer,  No.  308,981,  Dec.  9,  1884,  for  a 
machine  for  sewing  and  quilting  fabrics.  Held,  valid  as  to  claims 
9,  10,  14,  16,  18,  22  and  24,  and  infringed.  (C.  C.  A.,  1st  Cir. 
Mar.  16,  1899.) 

Brown,  J.]     *  Palmer  et  al.  r.   John  E.   Brown  Mfg.  Co.,  92 
Fed.  Rep.  925. 

36.  The  patent  to  Willcox  &  Borton,  No.  472,094,  Apr.  5, 
1892,  for  machines  for  making  overseams  in  sewing  knit  goods, 
construed  and  Held,  valid  and  infringed  as  to  claims  2  and  5. 
(C.  C.  A.,  2d  Cir.     Mar.  1,  1899.) 

Lacombe,  .J.]     *^^'illcox  &  Gibbs  Sewing  Mach.  Co.  v.  Merrow 
Mach.  Co.  et  al,  93  Fed.  Rep.  215. 

37.  The  patent  to  Crissen,  No.  513,307,  Jan.  23,  1894,  for 
window  or  curtain  fixtures.  Held,  valid  and  infringed  as  to  all 
of  the  claims.      (C.  C,  D.  Me.     Mar.  22,  1899.) 

Putnam,  J.]     *  Adams  &  Westlake  Co.  et  a!,  r.  E.  T.  Burrowes 
Co.,  93  Fed.  Rep.  462. 

38.  The  patent  to  Moore,  No.  524,502,  Aug.  14,  1894,  for 
improvements  in  hoisting  and  conveying  apparatus  employed 
in  digging  sewer  trenches,  construed  and  Held,  to  disclose  pat- 
entable invention  and  infringed.  (C.  C.,  N.  D.  N.  Y.  Apr. 
12,  1899.) 

CoxE,  J.]     *  Moore  r.  Marnell,  93  Fed.  Rep.  467. 

39.  The  patent  to  Corser,  No.  372,062,  Oct.  25,  1887,  for 
combined  metallic  buckle  and  Initton  holder.  Held,  valid  and 
infringed.      (C.  C,  D.  Ver.     Apr.  1,  1899.) 

Wheeler,    J.]     ^^ Corser  v.    Brattleboro  Overall  Co.,   93  Fed. 
Rep.  807. 


PATENTS.  227 

40.  The  patent  to  Woodward,  No.  354,499,  Dec.  14,  1886,  for 
an  improvement  in  sewing  machines,  construed,  Held,  vahd 
and  infringed  as  to  claims  4  and  6.  (C.  C. ,  D.  Me.  Jan.  24, 
1899.) 

Putnam,    J.]      '^-Pentiicket    Variable    Stitching-Mach.     Co.    r. 
Jones  Special  INhich.  Co.,  98  Fed.   Rep.  669. 

41.  The  patent  to  Jensen,  No.  281,767,  July  24,  1883,  for  a 
can-filling  machine.  Held,  infringed,  on  motion  for  preliminary 
injunction.     (C.  C,  N.  D.  Cal.     Mar.  16,  1899.) 

Morrow,  J.]     *  Alaska  Packers'  Ass'nr.  Pacific  Stean)  Whaling 
Co.  etal,  93  Fed.  Rep.  672. 

42.  The  patents  to  Schultz,  Nos.  291,784  and  291,785,  Jan. 
8,  1884,  for  a  process  of  tawing  hides  and  skins,  known  as 
"chrome  tanning,"  Held,  valid,  not  anticipated  and  infringed. 
(C.  C,  D.  Mass.     Apr.  7,  1899.) 

Colt,   J.]      *  Tannage  Patent  Co.   r.   Donallan,   98  Fed.    Rep, 
811.' 

43.  The  patent  to  Thompson,  No.  310,966,  Jan.  20,  1885,  for 
a  roller-coasting  structure,   construed  and  Held,  valid  and  in- 
fringed as  to  claim  1.     (C.  C.  A.,  3d  Cir.     May  1,  1899.) 
AcHESON,  J.     *  Thompson  v.  Third  Avenue  Traction  Co.  et  al., 

93  Fed.  Rep.  824. 

44.  The  patent  to  Hyatt,  No.  293,740,  Feb.  14,  1884,  for  an 
improvement  in  the  art  of  filtering  water,  Held,  infringed,  on 
motion  for  preliminary  injunction.  (C.  C,  E.  D.  ]Mo.  E.  D. 
Apr.  20,  1899.) 

Ar)A:MS,  J.]      *  New  York  Filter  Mfg.  Co.  /•.  Chemical  Bldg.  Co., 
93  Fed.  Rep.  827. 

45.  The  patent  to  Simonds,  No.  319,754,  June  9,  1885,  for 
improvements  in  dies  for  forging  articles  circular  in  cross-sec- 
tion. Held,  valid,  not  antici])ated  and  infringed.  (C.  C.  A.,  1st 
Cir.     Apr.  25,  1899.) 

Colt,  J.]  *Simonds  Rolling-Mach.  Co.  '•.  Hathorn  Mfg.  Co. 
et  al.  Hathorn  Mfg.  Co.  et  al.  ?\  Sinionds  Roll- 
ing-Machine Co.,  93  Fed.  Rep.  958. 

46.  The  patent  to  Simonds,  No.  419,292,  Jan.  14,  1S90,  for 


228  PATENTS. 

a  methofl   of  making  rolled-metal  forgiiigs  that  are  eircular  in 
cross-sectional  area,  IMd,  valid,  not  anticipated  and   infringed. 

47.  The  patents  to  Barrett,  Nos.  455,993,  July  11,  1891,  and 
527,102,  Oct.  9,  1894,  for  lifting  jacks.  Held,  valid  and  in- 
fringed, the  former  as  to  claims  1  and  6,  and  the  latter  as  to 
claim  19;  on  motion  for  }»ieliminary  injunction.  (C.  C,  W. 
D.  Mich.     Aug.  3,   1898.) 

Sevekens,  J.]     *  Duff  Mfg.  Co.  v.  Kalamazoo  R.  R.  Velocipede 
&  Car  Co.,  94  Fed.  Rep.  154. 

48.  The  patent  to  Julius,  No.  524,254,  Aug.  7,  1894,  for  im- 
provements in  the  manufacture  of  blue  coloring  matter,  Held, 
valid  and  infringed.      (C.  C,  S.  D.  N.  Y.     May  9,  1899.) 
CoxE,  J.]     '-i'Badische  Analin  ct  Soda  Fabrik  v.  Kalle  et  ai,  94 

Fed.  Rep.  1C3. 

49.  The  patent  to  Disbrow  and  Payne,  No.  490,105,  Jan.  17, 
1893,  for  a  combined  churn  and  butter  worker,  being  the  first 
to  combine  the  double  function  in  a  satisfactory  manner,  is  en- 
titled to  the  liberal  construction  accorded  to  pioneer  inventions 
and  Held,  valid  and  infringed.  (C.  C. ,  D.  Minn.  Feb.  1, 
1899.) 

LocHREN,  J.]      *0\vatonna  Mfg.    Co.  v.  F.  B.   Fargo  &  Co.,  94 
Fed.  Rep.  519. 

50.  The  patent  to  Bundy,  No.  452,894,  May  20,  1891,  for  a 
workman's  time  recorder,  construed  broadly  and  Held,  valid 
and  infringed  as  to  claims  3  and  4  by  the  time  recorder  made 
under  the  patent  to  Watson,  No.  515,805,  Mar.  6,  1894.  (C. 
C.  A.,  6th  Cir.     May  2,  1899.) 

LuRTON,  J.]     *  Bundy  Mfg.  Co.  ik  Detroit  Time  Register  Co., 
94  Fed.  Rep.  524. 

51.  The  patent  to  La  Due,  No.  543,834,  July  30,  1895,  for  a 
fruit-seeding  machine,  construed  and  Held,  valid,  not  antici- 
pated and  infringed  as  to  claims  1,  2,  3,  4  and  5  by  a  machine 
made  under  the  patent  to  Cox,  No.  608,108,  July  26,  1898,  but 
not  infringed  as  to  claims  6,  7  and  8.  (C.  C. ,  N.  D.  Cal. 
May  22,  1899.) 

Morrow,  J.]     *  Fruit  Cleaning  Co.   v.   Fresno  Home  Packing 
Co.  etal,  94  Fed.  Rep.,  845. 


PATENTS.  '2'2d 

52.  The  patent  to  Smith,  No.  522,435,  July  3,  1894,  for  im- 
provements in  spring-tooth  harrow,  construed  and  Held,  vaHd 
and  infringed  as  to  claims  1  and  2.      (C.  C,  E.  D.  Penn.     ^lay 

26,  1899.  f 

Dallas,  J.]     *  Smith  cf  (if.  r.  rh-idi,  94  Fed.  Rep.  865. 

53.  The  patent  to  Tesla,  No.  511,559,  Dec.  26,  1893,  for  im- 
provements in  electrical  transmission  of  power  is  not  void  on  its 
face,  as  covering  a  mode  of  operation  involving  only  the  func- 
tion of  a  machine  or  apparatus,  but  is  for  a  new  method  of  pro- 
ducing an  eletrical  result,  and  the  new  method  is  carried  out  or 
produced  by  the  use  of  apparatus.  (C.  C,  S.  D.  N.  Y.  May 
17,  1899.)  ' 

Shipmax,  J.]  -•=  Westinghouse  Electric  &  INIfg.  Co.  v.  Catskill 
Illuminating  &  Power  Co.,  94  Fed.  Rep. 
868. 

54.  The  patent  to  Rawson  et  al,  No.  407,963,  July  30,  1889, 
for  improvements  in  incandescent  mantles  for  gaslights,  in  view 
of  prior  adjudication.  Held,  valid  and  infringed  on  motion  for 
preliminary  injunction.  (C.  C,  S.  D.  N.  Y.  Apr.  23,  1898.) 
(Injunction  dissolved,  see  supra  p.  123.) 

Lacombe,  J.]  *Welsbach  Light  Co.  v.  Rex  Incandescent  Light 
Co.,  94  Fed.  Rep.  1004. 

55.  The  i)atent  to  Rawson,  No.  407,963,  July  30,  1889,  for 
improvements  in  incandescent  mantles  for  gaslights.  Held,  not 
anticipated  by  the  French  patent  to  Welsbach,  No.  172,064, 
Nov.  4,  1885,  nor  the  English  patent  to  Welsbach,  No.  15,266, 
Dec.  12,  1885,  and  valid  and  infringed,  on  motion  for  prelimi- 
nary injunction.     (C.  C,  S.  D.  N.  Y.     May  26,  1899.) 

Lacombe,    J.]     *  Welsbach    Light   Co.    r.    Rex    Incandescent 
Light  Co.,  94  Fed.  Rep.  1006. 

56.  The  patent  to  Rittig,  No.  354,935,  Dec.  28,  1886,  for  im- 
provements in  moulds  for  casting  type.  Held,  not  anticipated, 
valid  and  infringed  as  to  claims  6  and  7,  but  void  as  to  claims 
4  and  5.     (C.  C.  A.,  2d  Cir.     May  25,  1899.) 

Shipman,  J.]  *  Nelson  et  al.  v.  A,  D.  Farmer  &  Son  Type 
Foundry  Co.  et  al,  95  Fed.  Rep.  145. 


230  PATENTS. 

57.  The  Hochstadt  ct  al  patents,  Nos.  352,869,  Nov.  16, 
1886,  and  354,060,  Dec.  7,  1886,  for  improvements  in  moulds 
for  casting  type,  Held^  not  anticipated,  valid  and  infringed,  the 
former  as  to  claims  1,  3  and  4,  the  latter  as  to  claims  1,  2,  3 
and  4.  Claim  6,  however,  of  the  former  patent  is  invalid  for 
want  of  invention.  */f/. 

58.  The  patent  to  Mead,  No.  325,430,  Sept.  1,  1885,  for  im- 
provements in  buttons,  Held^  infringed  by  the  device  of  the  pat- 
ent to  Pringle,  No.  600,114,  on  motion  for  a  preliminary  injunc- 
tion.     (C.  C,  N.  D.  N.  Y.     June  14,  1899.) 

CoxE,  J.]     *  Consolidated  Fastener  Co.  r.  Hays  et  al,  95  Fed. 
Rep.  168. 

59.  The  patent  to  Barley,  No.  265,619,  Apr.  19,  1882,  for 
improvements  in  harrows,  Held,  not  anticipated  as  to  the  5th 
claim  by  the  patent  to  Wiard  &  Bullock,  No.  229,217,  June  22, 
1880.     (C.  C,  N.  J).  N.  Y.     June  14,  1899.) 

CoxE,  J.]     *  Deere  et  al.  v.  Arnold,  95  Fed.  Rep.  169. 

60.  The  patent  to  Stanley,  No.  323,372,  July  28,  1885,  for 
a  process  for  manufacturing  carbon  conductors  for  incandescent 
lamps.  Held,  valid  and  infringed.  (C.  C,  D.  N.  J.  July  14, 
1899.) 

KiRKPATRiCK,    J.]      *  Westinghouse    Electric    &    Mfg.    Co.    v. 

Beacon  Lamp  Co.  et  al.  95  Fed.  Rep. 
462. 

61.  The  patent  to  Sutton,  No.  383,258,  May  22,  1888,  for  a 
machine  for  removing  hairs  from  fur  skins  construed  and  Held, 
valid  as  to  claim  8,  and  infringed  by  the  device  of  the  patent  to 
Jenik  No.  557,129,  of  1896.  (C. 'c,  S.  D.  N.  Y.  June  13, 
1899.) 

TowNSEND,  J.]     *  Cimiotti  Unhairing  Co.  et  al.  v.  Bowsky,  95 
Fed.  Rep.  474. 

62.  The  patent  to  Palmer,  No.  251,630,  Dec.  27,  1881,  for  a 
bed  or  mattress  supporting  frame,  construed.  Held,  valid,  not 
anticipated,  and  infringed.      (C.  C,  D.  N.  Jer. ) 
KiRKPATRiCK,  J.]     *Ryan  v.  Newark  Spring  Mattress  Co.,  96 

Fed.  Rep.  100. 

63.  The  patent  to  Miehle,  No.  317,663,  May  12,   1885,  for 


PATENTS.  231 

improvements  in  })nnting  machines,  construed  and  Held,  valid, 

not  anticipated  and  infringed.      (C.  C,  N.  D.  111.  N.  D.     July 

27,  1899.) 

Kohlsaat,  J.]  *Miehle  Printing-Prcss  &  Mfg.  Co.  v.  Camp- 
bell Printing-Press  &  Mfg.  Co.,  96  Fed. 
Rep.  226. 

64.  The  patent  to  Perkins,  No.  560,599,  May  19,  1896,  for 
an  apparatus  for  repairing  asphalt  i)avements,  Held,  valid  and 
infringed.     (C.  C,  N.  D.  111.  N.  D.     June  27,  1899.) 
KoHLSAAT,  J.]     *  United   States   Repair   &   Guarantee  Co.   r. 

Assyrian  Asphalt  Co.  et  cd.,  96  Fed.  Rep. 
285^ 

65.  The  patent  to  Fowler,   No.  328,019,  Oct.   13,  1885,  for 
an   improvement  in  metal  cutting  saws,   construed  and  Held, 
valid  and  infringed.     (C.  C.  A.,  2d  Cir.     May  25,  1899.) 
Lacombe,  J.]     *  Thompson    ct  al.    r.   N.   T.   Bushnell  Co.,  96 

Fed.  Rep.  238. 

66.  The  patent  to  Rawson,  No.  407,963,  July  30,  1889,  for 
improvements  in  mantles  for  incandescent  gas  lamps.  Held,  not 
void  because  of  lapse,  for  failure  to  pay  an  annuity  of  a  prior 
French  patent  for  the  same  invention,  ]iending  the  application 
for  the  U.  S.  patent.  (C.  C.  A.,  2d  Cir.  Apr.  4,  1899.) 
Shipman,  J.]     *Welsbach    Light  Co.   r.   Apollo   Incandescent 

Gaslight  Co^  et  al,  87  0.  G.  1784.     96  Fed. 
Rep.  332. 

67.  The  patent  to  Swett,  No.  314,204,  Mar.  17,  1885,  fur  a 
staple  fastener  for  wooden  vessels,  construed.  Held,  valid,  not 
anticipated  and  infringed.  (C.  C,  S.  D.  N.  Y.  July  29, 
1899. ) 

TowNSEND,  J.]  *Acme  Flexible  Clasp  Co.  r.  Cary  Mfg.  Co., 
96  Fed.  Rep.  344. 

68.  The  patent  to  Parmly,  No.  540,800,  June  11,  1895,  for  an 
electric  arc  lamp,  construed,  Held,  valid,  not  anticipated  and 
infringed.     (C.  C,  W.  D.  Penn.     May  13,  1899.) 
AcHEsoN,  J.]     *  Elliptical  Carbon  Co.  v.  Solar  Carbon  &  Mfg. 

Co.  etal,  96  Fed.  Rep.  413. 

69.  The  patent  to  By  water,  No.  374,888,  Dec.  13,  1887,  for 


232  PATENTS. 

improvements  in  knitted  fabrics,   Ilelil,   valid,   not  anticipated 
and  infringed.     (C.  C,  8.  D.  N.  Y.     July  31,  1899.) 
TowNSEND,  J.]      ^Hanifen  r.  Price  et  al,  96  Fed.  Rep.  435. 

70.  The  patent  to  Low,  No.  238,940,  Mar.  15,  1881,  for  im- 
provements   in    dentistry,    Held,    valid,    not    anticipated    and 
infringed.      (C.  C,  S.  D."  N.  Y.     Jidy  31,  1899.) 
TowNSEKD,  J.]     *  International  Tooth-Crown  Co.   v.   Kyle,   96 

Fed.  Rep.  442. 

71.  The  patent  to  Anderson,  No.  412,155,  Oct.  1,  1889,  for 
an  improvement  in  electric  railway  contact  devices,  construed 
and  Held,  valid  as  to  claim  8,  not  anticijjated  and  infringed. 
(C.  C,  D.  N.  Jer.     Aug  1,  3  899.) 

KiRKPATRicK,   J.]      *  General  Electric  Co.   r.   Railway  Electric 
Light  &  Power  Co.,  96  Fed.  Rep.  563. 

72.  The  patent  to  Williames,  No.  256,089,  Apr.  4,  1882,  for 
an  improvement  in  heating  apparatus,  construed  and  Held, 
valid,  not  anticipated  and  infringed.  (C.  C.  A.,  3d  Cir.  Oct. 
3,  1899.) 

Beadford,  J.]      *McNeely  et  al.  v.  Williames  et  at,  Wilhames 
et  al.  v.  McNeely  et  al.,  96  Fed.  Rep.  978. 

73.  The  patent  to  Barrett,  No.  455,993,  July  14,  1891,  for  an 
improvement  in  lifting  jacks,  construed  and  Held,  valid  and  in- 
fringed.     (C.  C,  D.  Mass.     Oct.  4,  1899.) 

Putnam,  J.]     *Duft'  Mfg.  Co.  ;'.  Norton,  96  Fed.  Rep.  986. 

74.  The  patent  to  Buzzell,  No.  317,622,  May  12,  1885,  for  a 
tool  for  grinding  and  polishing  the  front  of  boot  and  shoe  heels. 
Held,  valid,  not  anticipated  and  infringed.  (C.  C.  A.,  1st  Cir. 
Sept.  14,  1899.) 

Colt,  J.]     *  Reynolds  i:  Buzzell,  96  Fed,  Rep.  997. 

75.  The  patent  to  Marqua,  No.  301,908,  July  15,  1884,  for 
improvements  in  sending-traps  for  flying  targets.  Held,  valid 
and  infringed.      (C.  C,  D.  N.  Jer.     Oct.  5,  1899.) 

Bradford,  J.]     *  Cleveland  Target  Co.  v.   Empire  Target  Co. 
etal,  97  Fed.  Rep.  44. 

76.  The  patent  to  Potts  and  Potts,  322,393,  July  14,  1885, 


PATENTS.  233 

for  a  clay   disintegrator,  construed,  Held,  valid  and   inlVinged. 

(C.  C.  A.",  6th  Cir.     Oct.  23,  181)9.) 

Taft,  J,]     *C.  &  A.  Potts  &  Co.  r.  Creager  c <  (il.,  !»7  Fed.  Ucp. 

78. 
77.  The  patent  to  Morrison,  No.  428,123,  INIay  20,  1890,  for 
a  fence-Avire  coupling,  construed  and  Held,  valid  and  infringed 
b}'  the  device  shown  in  the  patent  to  Gerard  &  Lawrence,  No. 
575,641,  Jan.  i9,  1897.     (C.  C.  A.,  6th  Cir.     Oct.  3,  1899.) 
Taft,  .J.]     ^-^^ Kisinger-Ison  Co.  r.  Bradford  Belting  Co.,  97  Fed. 

Rep.  505. 

X.   Valid,  but  not  Infringed. 

1.  Assuming  the  patent  No.  325,430,  granted  Sept.  1,  1885, 
to  A.  G.  Mead,  to  be  valid,  yet  in  view  of  the  limited  scope  of 
the  patent  as  detined  by  the  prior  art,  it  is  not  infringed.  (C. 
C,  D.  Mass.     Oct.  31,  1898.) 

Colt,  J.]     *  Consolidated  Fastener  Co.  r.  Weisner  e<  a/.     Same 
V.  Lehr,  90  Fed.  Rep.  104. 

2.  The  patent  to  J.  A.  Brill,  No.  432,115,  July  15,  1890,  for 
an  improvement  in  car  trucks,  construed  as  to  claims  1,  4  and 
6,  and  Held,  limited  to  a  combination  the  essential  element  of 
which  is  the  "pedestal  which  extends  below  the  bottom  of  the 
axle  box,"  and  not  infringed.  (C.  C.  A.,  8th  Cir.  Nov.  28, 
1898.) 

Thayer,  J.]     *  Brill  r.  St.  Louis  Car  Co.  et  al,  90  Fed.  Rep. 
666. 

3.  The  patent  to  Munro,  No.  298,879,  May  20,  1884,  for  an 
improvement  in  box  trimming  and  covering  machines,  construed 
and  Held,  limited  to  specific  forms  of  mechanism  described  and 
claimed  and  not  infringed  as  to  claims  2,  3  and  6.  (C.  C.  A., 
2d  Cir.     Dec.  7,  1898. ) 

Shipman,  J.]     *  American  Box-Mach.  Co,  v.  Hughes  ei  al.,  91 
Fed.  Rep.  147. 

4.  The  patent  to  Eutebrouk,  No.  230,409,  July  27,  1880,  for 
an  improvement  in  breech-loading  firearms,  construed  and 
Held,  valid  when  limited  as  it  is  by  the  proceedings  in  the  Pat- 
ent Office,  and  the  language  of  the  specification  and  claim,  to 
the  functions  of  the  two  essential  elements  of  the  claim,  and  not 


234  PATENTS. 

infringed  by  a  device  which  omits  one  of  these  elements.      (C. 

C.  A.,  IstCir.     Dec.  27,  1898.) 

Colt,  J.]     *  Lovell  r.  Johnson,  91  Fed.  Rep.  160. 

5.  The  patent  to  Gillet,  No.  247,388,  Sept.  20,  1881,  for  im- 
provements in  corn-shellers,  Held,  valid,  but  not  infringed. 
(C.  C.  A.,  7th  Cir.     Jan.  3,  1899.) 

BuNN,  J.]     *  Sandwich  Enterprise  Co.  et  al.  v.  Joliet  Mfg.  Co., 
91  Fed.  Rep.  254. 

6.  The  patent  to  Michaehs,  No.  322,194,  July  14,  1885,  for 
improvements  in  the  manufacture  of  chloroform  and  acetic  acid,- 
construed  and  Held,  valid,  but  not  infringed.  (C.  C. ,  E.  D, 
Mo.  E.  D.     Feb.  7,  1899.) 

Adams,  J.]     *  Michaehs  et  al.   v.   Larkin  ct  al,  91  Fed.  Rep. 
778. 

7.  The  patent  to  Hipperling,  No.  281,508,  June  17,  1883,  for 
an  improvement  in  machines  for  double-seaming  the  head  and 
bottonj  of  rectangular  shaped  tin  cans,  inust  in  view  of  the 
prior  art,  be  confined  to  the  particular  form  of  construction 
shown,  and  Held,  that  the  2d  and  3d  claims  are  not  infringed 
by  a  machine  made  imder  the  patent  to  Adriance,  No.  472,284. 
(C.  C.  A.,  3d  Cir.     Jan.  25,  1899.) 

Dallas,  J.]     *Ginnac^  al.  r.  IMersereau  Mfg.  Co.,  92  Fed.  Rep. 
369. 

8.  The  patent  to  Wardwell,  No.  480,157,  Apr.  2,  1892,  for  a 
machine  for  winding  cops  construed,  and.  Held,  not  infringed. 
(C.  C.  A.,  2d  Cir.  Jan.  25,  1899.) 

Per  Curl\m.]     *  Universal  Winding  Co.  v.  Willimantic  Linen 
Co.,  92  Fed.  Rep.  391. 

9.  The  patent  to  Chambers,  No.  362,204,  Mar.  3,  1887,  for 
improvements  in  brick  machines,  construed  and  Held,  not  in- 
fringed as  to  claims  7,  9,  10,  11  and  12.  (C.  C.  A.,  6th  Cir. 
Mar.  7,  1899.) 

Taft,   J.]     *Penfield  v.   Chambers   Bros.    Co.,   92  Fed.    Rep. 
630. 

10.  The  patents  to  Green,  Nos.  465,407  and  465,432,  Dec. 
15,  1891,  for  an  electric  railway  and  means  of  operating  the 
same,  if  construed  to  be  valid  must  be  confined  to  specific  de- 


PATENTS.  235 

vices  disclosed  in  thcni  and  IlcJ(h   not   infringed.      (C.  C.  A., 
6th  Cir.     Mar.  7,  1899.) 

Taft,  J.]     *  Kelly  et  al.  r.  Springfield   Ry.  Co.  d  al.,  92  Fed. 
Rep.  614. 

11.  The  patent  to  Ewig,  No.  408,800,  Ang.  6,  1889,  for  a 
waist-band  fastener  for  trousers,  contains  only  one  novel  feature, 
narrowly  construed,  and  Held,  not  infringed.  (C.  C,  D.  Md. 
Feb.  5,  1899. ) 

Morris,  J.]     *Blum  et  al.  r.  Kerngood,  92  Fed.  Rep.  992. 

12.  The  patent  to  Dodge  and  Philion,  No.  260,462,  July  4, 
1882,  for  a  separal)le  pulley,  construed  and  Held,  liniited  to  a 
pulley  in  which  the  parts  contact  at  the  rim  but  are  separated 
at  the  hub,  and  not  infringed  by  a  pulley  in  which  the  parts 
contact  at  both  rim  and  liub.  (C.  C.  A.,  2d  Cir.  Dec.  7, 
1898.) 

Lacombe,  J.]     *  Dodge  et  al.   v.   Fulton  Pulley  Co.   ct  al.,  92 
Fed.  Rep.  995. 

13.  The  patent  to  Warren,  No.  589,676,  Sept.  7,  1897,  for  an 
eye-gl  iss  case.  Held,  valid,  but  not  infringed.  Warren  r.  Casey 
et  al.,  91  Fed.  Rep.  953,  reversed  as  to  decree  of  invalidity.  (C. 
C.  A.,  3d  Cir.     May  1,  1899.) 

Kirkpatrick,  J.]     *  Warren  v.  Casey  et  al,  93  Fed.  Rep.  663. 

14.  The  patent  to  Gail,  No.  399,867,  Mar.  19,  1899,  for  an 
improvement  in  woven-wire  mattresses  and  bed-bottoms,  con- 
strued and  Held,  limited  by  the  prior  art  to  the  specific  form 
shown,  and  not  infringed.  (C.  C.  A.,  3d  Cir.  May  4,  1899.) 
AcHESON,  J.]     *Ryan  v.  Runyon  et  al.,  93  Fed.  Rep.  970. 

15.  The  patent  to  Ryan,  No.  403,143,  May  14,  1889,  for  im- 
provements in  woven-wire  mattresses  and  bed-bottoms,  con- 
strued and  Held,  limited  by  the  prior  art  to  the  specific  form 
shown.  ^Id. 

16.  The  patent  to  Tower,  No.  378,223,  Feb.  21,  1888,  for  a 
pen-holder  with  a  cork  sleeve,  construed  and  Held,  not  in- 
fringed. (C.  C.  A.,  2d  Cir.  Apr.  4,  1899.  (Tower  v.  Eagle 
Pencil  Co.,  90  Fed.  Rep.  662,  revenged.) 

Wallace,  J.]     *  Tower  v.  Eagle  Pencil  Co.  94  Fed.  Rep.  361. 

17.  The  patent  to  Bauer,  No.  305,882,  Sept.  20,  1884,  for  a 


236  PATENTS. 

■watchman's  time-detector,  construed,  limited  and  Held^  not  in- 
fringed by  the  time-recorder  made  under  the  patent  to  A^^atson, 
No.  515,805,  Mar.  6,  1894.     (C.  C.  A.,  6th  Cir.     May  2,  1899.) 

LuRTox,  J.]      *Bundy  Mi'g.   Co.  v.  Detroit  Time-Register  Co., 
94  Fed.  Rep.  524. 

18.  The  patent  to  Perkins,  No.  501,537,  July  18,  1893,  for 
an  improved  method  of  repairing  asphalt  pavements,  an  essen- 
tial feature  of  which  consists  in  the  perfect  commingling  of  old 
and  new  material  in  the  process  of  repairing,  is  not  anticipated 
by  the  so-called  Crochet  process  in  which  the  old  material  is 
removed  and  new  material  put  in  its  place,  and  Held,  not 
infringed  by  process  in  which  no  such  commingling  is 
attempted,  but  the  old  material  is  removed,  the  depression 
carefully  cleaned  and  coated  with  cement  to  cause  adhesion 
with  the  ncAV  material  which  is  then  added.  (C.  C.  A.,  2d 
Cir.    May  25,  1899.) 

Shipman,  J.]      *  United  States  Repair  &  Guaranty  Co.  et  al.  v. 
Standard  Paving  Co,,  95  Fed.  Rep.  137. 

19.  The  patent  to  Brooks,  No.  454,845,  June  30,  1891,  for 
improvements  in  typewriting  machines,  if  valid  must,  in  view 
of  the  state  of  the  art,  be  limited  as  to  claims  5,  6,  7,  8  and  9, 
to  the  precise  construction  shown  and  described.  (C.  C. ,  D. 
N.  J.     June  20,  1899.) 

AcHESON,  J.]     *  Union  Writing  Mach.  Co.  v.  Domestic  Sewing 
Mach.  Co.,  95  Fed.  Rep.  140. 

20.  The  patent  to  Rauh,  No.  347,442,  Aug.  17,  1886,  for  a 
combined  bathing  shoe  and  stocking,  construed  and  in  view  of 
the  state  of  the  art,  Held^  limited  to  the  precise  construction 
shown  and  not  infringed.  (C.  C,  S.  D.  N.  Y.  May  26,  1899.) 
Shipman,  J.]     *S.  Rauh  &  Co.  v.  Guinzburg,  95  Fed.  Rep.  159. 

21.  The  patent  to  Huntington,  No.  277,134,  May  8,  1883,  for 
a  crushing  mill,  construed  and  Held^  not  infringed.  (C.  C.  A., 
3d  Cir.     July  6,  1899.) 

Dallas,  J.]     *Whitaker  Cement  Co.  et  al.  v.  Huntington  Dry 
Pulverizer  Co.  et  cd.,  95  Fed.  Rep.  471. 

22.  Claim  1  of  Letters  Patent  No.  364,161,  issued  May  31, 
1887,  to  George  H.  Cushman,  for  improvement  in  paper-box 


PATENTS.  237 

machines,  Held^  to  be  limited  in  view  of  the  prior  state  of  the 
art  to  the  specitic  form  of  mechanism  shown  and  described,  and 
as  so  construed  not  infringed.  (C.  C.  A.,  1st  Cir.  June  1, 
1899. ) 

Putnam,  J.]     ^Cushman  Paper-Box  Mach.  Co.  v.  (ioddard  ci 
ai,  88  0.  G.  2410,  95  Fed.  Rep.  (UM. 

23.  The  patents  to  ^hicCoU,  Nos.  570,259  and  570,2(10,  Oct. 
27,    1896,    for  improvements  in  lappet  looms,   construed    and 
Held,  not  infringed.      (C.  C.  A.,  1st  Cir.     May  31,  1899.) 
Colt,  J.]     ^JNIacColl  v.   Knowles  Loom  Works,  95  Fed.  Rep. 

982. 
*  MacColl  V.  Cromjiton  Loom  ^^'orks,  95  Fed.  Rep. 
987. 

24.  The  patents  to  Stokes,  Nop.  376,400,  Jan.  10,  1888, 
397,254,  Feb.  5,  1889,  for  rasp-cutting  machines,  and  No. 
383,999,  June  5,  1899,  for  a  rasp  as  an  improved  article  of  man- 
ufacture, construed,  and  Held,  valid,  luit  not  infringed.  (C. 
C,  U.  N.  Jer.) 

KiRKPATRicK,  J.]     ^'Stokes  Bros.  Mfg.  Co.  v.  Heller  f<  cd.,  96 
Fed.  Rep.  104. 

25.  The  patent  to  Miehle,  No.  322,309,  July  14,  1885,  for 
improvements  in  printing  njachines,  construed,  and  Held,  not 
infringed  as  to  claims  1,  2  and  4.  (C.  C,  N.  D.  111.  N.  D. 
July  27,  1899. ) 

KoHLSAAT,  J.]  *]\Iiehle  Printing  Press  &  Mfg.  Co.  v.  Camp- 
bell Printing  Press  cS:  Mfg.  Co.,  96  Fed.  Rep. 
226. 

26.  The  patent  to  Westinghouse,  Jr.,  No.  538,001,  Apr.  23, 
1895,  and  the  patent  to  D'ixon,  No.  382,032,  May  1,  1888, 
both  for  improvements  in  air-brakes  for  railroad  cars,  construed, 
and  Held,  limited  to  the  specific  devices  shown  and  dcs('ril)ed, 
and  not  infringed.  (Lacombe,  J.,  dissenting  as  to  Westing- 
house  patent.)  (C.  C.  A.,  2d  Cir.  July  18,  1899.) 
Shipmax,  J.]     *  Westinghouse  Air-Brake  Co.  v.  New  York  Air- 

Brake  Co.  et  (d.,  96  Fed.  Rep.  991. 

XL   Validity  Not  Determined,  Not  Infringed. 

1.   It  is  unnecessary  to  determine  whether,  in  view  of  certain 


238  PATENTS. 

exhibits,  it  involved  invention  to  produce  the  valance  of  the  3d 
claim  of  the  patent  to  Palmer,  No.  474,997,  May  17,  1892,  for 
an  improvement  in  woven  valances  for  hammocks,  for  the  rea- 
son that  the  claim  cannot  be  broadened  to  cover  the  alleged  in- 
fringing article  without  including  the  said  exhibits  also.  The 
bill  is  dismissed.  (C.  C,  8.  D.  N.  Y.  Nov.  15,  1898.) 
CoxE,  J.]      *  Palmer  et  al.  r.  De  Yongh,  90  Fed.  Rep.  1898. 

2.  Claim  8  of  the  patent  to  Alexander  McTammany,  No. 
290,697,  Dec.  25,  1883,  which  relates  to  a  device  for  "feeding, 
winding  and  guiding  the  perforated  music  sheets  "  used  in  auto- 
matic musical  instruments,  does  not  cover  a  primary  invention, 
and  the  complainant  is  therefore  not  entitled  to  a  broad  range  of 
equivalents,  and  since  defendant's  device  differs  so  radically 
from  complainant's  he  cannot  be  held  as  an  infringer,  even  if 
the  claim  wxre  entitled  to  a  broad  interpretation.  The  bill  is 
dismissed.     (C.  C,  S.  D.  N.  Y.     Nov.  15,  1898.) 

CoxE,  J.]      ^McTammany  et  al  v.  Paillard,  90  Fed.  Rep.  283. 

3.  The  facts  disclosed  by  the  file-wrapper  in  the  Norton  pat- 
ent, No.  267,214,  Nov.  7,  1882,  for  improvements  in  can-head- 
ing machine,  show  that  it  is  not  for  a  primary  invention,  and  it 
must  therefore  be  strictly  construed.  Machines  made  under  the 
patent  to  Mathias  Jensen,  No.  443,445,  Dec.  23,  1890,  for  ma- 
chine for  capping  and  crimping  cans,  does  not  infringe  the  Nor- 
ton patent;  nor  do  such  machines  infringe  the  following  pat- 
ents: Norton  and  Hodgson,  No.  274,363,  Mar.  20,  1883;  Norton 
and  Hodgson,  No.  294,065,  Feb.  26,  1884;  Jordan,  No.  322,- 
060,  July  14,  1885.  (C.  C.  A.,  9th  Cir.  Oct.  24,  1898.) 
Morrow,  J.]     *  Norton  et  al.  r.  Jensen,  90  Fed.  Rep.  415. 

4.  The  patent  to  Arbogast,  No. '260,819,  July  11,  1882,  for 
an  improvement  in  the  method  of  manufacturing  glass  ware, 
construed  and  Held,  not  infringed.  (C.  C.  A.,  3d  Cir.  Dec. 
6,  1898.) 

Dallas,  J.]     =i=  United  States  Glass  Co.  v.  Atlas  Glass  Co.  et  al., 
90  Fed.  Rep.  724. 

5.  The  patent  to  Cushman,  No.  364,161,  May  31,  1887,  for 
an  improvement  in  paper-box  machines,  construed,  and  in  view 
of  the  prior  state  of  the  art,  limited  to  the  specific  mechanism 


PATENTS.  239 

shown  and  described,  and  llchJ^  \wi  infringed.     (C.  C,  D.  ISIass. 
Dec.  5,  1898.) 

Colt,  J.]  *Cnshnian  Paper-Box  Maeh.  Co.  r.  CJoddard  ei  a/. , 
90  Fed.  Rep.  727. 
t).  The  patent  to  Rice,  No.  448,260,  Mar.  17,  1891,  for  an 
improvement  in  motor  suspension  for  railway  cars.  Held,  not 
infringed  by  the  motor  suspension  made  in  accordance  with  the 
patent  to  Uebelacker,  No.  554,353,  Feb.  11,  1896,  or  the  patent 
to  Short,  No.  546,360,  Sept.  17,  1895.  (C.  C.  A.,  1st  Cir. 
Jan.  26,  1899.) 

Colt,    J.]      *  Thomson-Houston    Electric    Co.    v.    Athol   and 
Orange  St.  Ry.  Co.,  91  Fed.  Rep.  767. 

7.  The  patent  to  Barnhart,  No.  411,368,  Sept.  17,  1889,  for 
improvements  in  means  for  capping  and  sealing  milk  bottles, 
construed  and  Held,  not  infringed.  (C.  C.  A.,  7th  Cir.  Feb. 
7,  1899.) 

Per  Curiam]     *  Thatcher  JMfg.  Co.  v.  Creamery  Package  Mfg. 
Co.  etal,  91  Fed.  Rep.  919.' 

8.  The  patent  to  Smith,  No.  233,035,  Oct.  5,  1880,  for  an 
improved  mowing  machine.  Held,  not  infringed.  (C.  C.  A., 
7th  Cir.     Feb.  16,  1899.) 

Woods,  J.]     *  Wilson  et  (d.  r.  McCormick  Harvester  Mach.  Co., 
92  Fed.  Rep.  167. 

9.  The  patent  to  Roosevelt,  No.  215,837,  May  27,  1879,  for 
an  improvement  in  telephone  switches,  Held,  to  be  for  a  narrow 
invention  at  most  and  not  infringed.  (C.  C.  A.,  7th  Cir.  Feb. 
7,  1899.) 

Woods,  J.]     *  Western  Electric  Co.  r.  Western  Tel.  Const.  Co., 
et(d.,  92  Fed.  Rep.  181. 

10.  The  patent  to  Palmer,  No.  271,510,  Jan.  30,  1883,  for  an 
improvement  in  hammocks  or  bed-bottoms,  claims  1  and  2  of 
Avhich  have  for  their  fundamental  characteristic  suspension 
loops  formed  of  the  unwoven  war})  threads  of  the  faliric,  con- 
strued and  Held,  not  infringed  by  a  hammock,  the  suspension 
loops  of  which  are  made  of  the  completely  woven  fabric. 
Claim  4,  covering  the  ]»illow  ])ocket,  Held,  to  be  for  the  specific 
construction  of  such  pocket  as  described  in  the  patent,  and  not 
infringed.      (C.  C,  E.  D.  Pemi.     Feb.  28,  1899.) 

Dallas,  J.]     *  Palmer  r.  Knight,  92  Fed.  Rep.  365. 


240  PATENTS. 

11.  The  patent  to  Warren,  No.  327,626,  Oct.  6,  1885,  for  a 
method  of  attaching  stiffenings  for  dress  waists,  is  not  void  on 
its  face  for  want  of  novelty  and  invention.  (C.  C. ,  D.  Conn. 
Feb.  22,  1899.) 

TowNSEND,  J.]     *  Warren  Featherbone  Co.  r.  ^^'arner  Bros.  Co., 
92  Fed.  Rep.  990. 

12.  The  patent  to  WiUiams  &  Lade,  No.  439,920,  Nov.  4, 
1890,  for  an  improvement  in  buttons,  construed  and  Held,  not 
infringed.      (C.  C,  D.  Ky.     June  3,  1899.) 

EvAxXS,  -J.]     ^=  Patent  Button  Co.  r.  Pilcher,  95  Fed.  Rep.  479. 

13.  The  patent  to  Hawley,  No.  447,179,  Feb.  24,  1991,  for 
an  improvement  in  furnaces  if  valid,  must  be  limited  as  to 
claim  1,  to  the  specific  devices  enumerated,  and  Held,  not  in- 
fringed.     (C.  C,  D.  Mass.     Aug.  7,  1899.) 

Colt,  .J.]     '-J^  Hawley  Furnace  Co.  of  N.  E.  r.  Braintree  &  W. 
St.  Ry.  Co.,  96  Fed.  Rep.  221. 

14.  The  patent  to  Ericson,  No.  491,012,  Jan.  31,  1893,  for  a 
bicycle  bell.  Held,  limited  by  specification  and  not  infringed. 
(C.'C,  D.  Mass.) 

Brown,  J.]     *  Nutter  et  al,  v.  Brown  et  al,  96  Fed.  Rep.  229. 

15.  The  patent  to  Fay,  No.  319,215,  June  2,  1885,  for  spring 
calipers  and  dividers,  Held,  not  infringed.  (C.  C,  D.  Mass. 
July  29,  1899.) 

Brown,  J.]     *Starrett  v.  J.  Stevens  Arms  &  Tool  Co.    Same  v. 
Athol  Mach.  Co.,  96  Fed.  Rep.  244. 

16.  The  patent  to  Smith,  No.  395,668,  Jan.  1,  1889,  for  a 
shoedast,  construed  as  to  claim  2  and  Held,  not  infringed.  (C. 
C,  D.  Mass.     July  28,  1899.) 

Brown,  J.]     *  Miller  v.   Mawhinney  Last  Co.,   96  Fed.    Rep. 
248. 

17.  The  patent  to  Richardson,  No.  412,296,  Oct.  8,  1889,  for 
improvements  in  fastenings  for  gloves  and  other  articles,  con- 
strued and  limited  to  the  precise  form  shown  and  described  and 
Held,  not  infringed  by  the  fastener  of  the  patent  to  Adams,  No. 
566,731,  Sept.  1,  1896.  (C.  C.  A.,  1st  Cir.  May  26,  1899.) 
Putnam,  J.]     *Ball  &  Socket  Fastener  Co.  v.  C.  A.  Edgarton 

Mfg.  Co.,  96  Fed.  Rep.  489. 


PATENTS.  241 

18.  The  patents  to  Gassett,  No.  233,746,  Oct.  20,  18S0,  and 
No.  246,492.  Aug.  30,  1881,  for  electric  railway  signalling  ap- 
paratus, limited  to  precise  construction  shown  and  Held,  not 
infringed.  (C.  C.  A.,  3d  Cir.  Sept.  13,  181)9.) 
KiRKPATRicK,  J.]  '!=  Union  Switch  &  Signal  Co.  et  al.  v.  Phila- 
delphia &  R.  R.  Co.  et  al,  96  Fed.  Rep. 
761. 

19.  The  Gassett  c^  Fisher  patent,  No.  227,102,  May  4,  1880, 
and  the  patent  to  Means,  No.  273,377,  Mar.  6,  1883,  for  con- 
nectors for  electric  track  circuits.  Held,  not  infringed.        */(^/. 

20.  The  patent  to  Jones,  No.  404,414,  June  4,  1889,  for  a 
process  of  mixing  molten  metal,  Held,  not  infringed.  (C.  C. 
A.,  3d  Cir.     Aug.  21,  1899.) 

KiRKPATRiCK,  J.]     *  Cambria  Iron  Co.  v.   Carnegie  Steel  Co., 
Lim.,  96  Fed.  Rep.  850. 

21.  The  patent  to  Hebbard,  No.  371,839,  Oct.  1887,  for  im- 
provements in  target- traps  construed,  and  if  it  is  to  be  sustained 
at  all  in  view  of  the  prior  art  must  be  limited  to  the  precise 
construction  shown  and  described,  and  Held,  not  infringed. 
(C.  C,  D.  N.  Jer.     Oct.  5,  1899.) 

Bradford,  J.]     *  Cleveland  Target  Co.  v.  Empire  Target  Co. 
et  a!.,  97  Fed.  Rep.  44. 

22.  The  design  patent  to  Williams,  No.  30,147,  Feb.  7,  1899, 
for  a  fixture  for  generating  and  burning  gas  from  liquid  hydro- 
carbons. Held,  not  infringed.  The  patent  to  ^^'illiams,  No. 
606,435,  June  28,  1898,  for  improvements  in  gas-generating  gas 
fixtures,  construed,  and  Held,  not  infringed.  (C.  C.  A.,  7th 
Cir.     Oct.  3,  1899.) 

Woods,  J.]     *  Magic  Light  Co.  r.  Economy  Gas-Lamp  Co.,  97 
Fed.  Rep.  87. 

23.  The  patent  to  Rickard  &  Long,  No.  604,338,  May  17, 
1898,  for  an  improvement  in  the  art  of  maturing  tobacco 
leaves,  construed,  and  Held,  not  infringed.  (C.  C,  D.  Conn. 
Aug.  28,  1899.) 

Tow>rsEND,  J.]     *  Rickard  et  al.  v.  Du  Bon,  97  Fed.  Rep.  96. 

24.  The  patent  to  Roulstone,  No.  508,557,  Nov.  14,  1893,  for 
adjustable  supports  for  school  furniture,  construed  and  limited 

*        16 


242  PATENTS. 

to  exact  devices  shown,  and   Held,   not  infringed.      (C.  C,  D. 
Conn.     Oct.  11,  1899.) 

TowNSEND,  J.]-  *  Chandler  Adjustal)le  Chair  ct  Desk  Co.  v. 
Town  of  Windham,  97  Fed.  Rep.  107. 
25.  The  patent  to  Coburn,  No.  365,240,  June  21,  1887,  for 
an  improved  trolley-track,  construed,  and  without  determining 
the  question  of  invention.  Held,  not  infringed.  (C.  C.  A.,  1st 
Cir.  Sept.  14,  1899.) 
Putnam,  J.]      *  Coburn  Trolley-Track  Mfg.   Co.   r.  Chandler  «« 

a/.,  97  Fed.  Rep.  333. 
XII.   Void  in  Whole  or  in  Part. 

1.  The  patent  to  McKee  &  Harrington,  No.  506,430,  Oct.  10, 
1893,  for  "improvements  in  wood  rims  for  bicycles,"  Held,  to 
be  anticipated  as  to  claims  1  and  4  by  prior  public  use  and 
prior  art. 

The  patent  to  Marble,  No.  547,732,  Oct.  8,  1895,  for  im- 
provements in  bicycle  wheels,  the  tongue  and  groove-joint  in 
the  rim  of  which  was  the  sole  feature  for  which  novelty  was 
claimed.  Held,  anticipated  as  to  claims  1  and  2  by  prior  publi- 
cations and  letters  patent.  (C.  C,  E.  D.  Wis.  Nov.  7,  1898.) 
Seaman,  J.]  *  Indiana  Novelty  Mfg.  Co.  v.  Crocker  Chair  Co. 
Same  v.  Smith  Mfg.  Co.,  90  Fed.  Rep.  488. 

2.  The  patent  to  Laura  A.  Fry,  No.  399,029,  Mar.  5,  1889, 
for  an  improvement  in  the  art  of  decorating  pottery  ware.  Held, 
to  be  void  for  lack  of  patentable  novelty  and  for  anticipation. 
(C.  C,  S.  D.  Ohio,  W.  D.     Dec.  2,  1898. ) 

Taft,  .J.]     *  Fry  v.  Rookwood  Pottery  Co.  et  al.,  90  Fed.  Rep. 
495. 

3.  The  patent  to  J.  A.  Brill,  No.  432,115,  July  15,  1890,  for 
an  improvement  in  car  trucks.  Held,  anticipated  as  to  claim  3 
by  the  patent  to  \\'oodbury,  40,008,  May  30,  1865.  (C.  C.  A., 
8th  Cir.     Nov.  28,  1898.J 

Thayer,  J.]      *  Brill  r.  St.  Louis  Car  Co.  et  ah,  90  Fed.  Rep. 
6G6. 

4.  The  design  patent  to  Cary,  No.  28,142,  Jan.  11,  1898  (ap- 
plication filed  Oct.  15,  1894),  for  a  box-fastener,  Held,  antici- 
pated by  (article  of  manufacture)  }>atent  to  the  same  inventor, 


PATf:NTS.  *J4.'> 

Cary,  No.  450,75;?,  Apr.  21,  ISDl,  fur  tlu- same  suhjoct-mattcr, 
granted  more  than  two  years  prior  to  tlie  filing  date  of  the  aj*- 
plication  for  the  desij^n  ])ati'nt.  (C.  C,  S.  D.  N.  Y.  Nov.  22, 
1898.) 

Wheeler,  J.]     *Cary  Mfg.    Co.  r.   Neal  rt  al.,   HO  Fed.   Kep. 
725. 

5.  The  patent  to  Palmer,  No.  493,220,  Mar.  7,  189o,  for  a 
fabric  made  of  elastic  and  impervious  material,  such  as  rubber. 
Held,  void  on  the  ground  that  such  fabric  constituted  the 
essential  feature  of  the  invention  covered  by  patent  No.  489,- 
714,  Jan.  10,  1893,  to  the  same  patentee,  for  a  rubber  tube  for 
pneumatic  and  other  purposes. 

The  patent  to  Huss,  No.  539,234,  May  14,  1895,  for  the  same 
fabric,  Held,  void  for  the  same  reasons,  on  prior  patent  to  Huss, 
No.  495,975,  April  25,  1S93,  for  improvement  in  ]meumatie 
tires. 

Suit  was  l»rought  under  R.  S.  §  4918,  to  determine  priority  of 
invention  between  the  above  noted  patents,  but  as  both  were 
declared  void,  it  was  held  that  determination  of  priority  was 
unnecessary.  (C.  C.  A.,  6th  Cir.  Dec.  5,  1898.) 
Severexs,  J.]  *  Palmer  Pneumatic  Tire  Co.  r.  Lozier,  90  Fed. 
Rep.  732. 

6.  The  patent  to  Cogswell,  No.  362,938,  May  17,  1887,  for 
apparatus  for  cooling  saline  soluiions,  Held,  void,  in  view  of 
prior  art.     (C.  C.  A.,  6th  Cir.     Nov.  28,  1898.) 

Taft,  J.]     *  Solva}-  Process  Co.  r.  Michigan  Alkali   Co.  cf  al., 
90  Fed.  Rep.  818. 

7.  The  patent  to  Falk,  No.  545,040,  Aug.  20,  1895,  for  an 
improvement  in  rail-joints  and  methods  of  forming  the  same, 
Held,  void,  for  want  of  patentable  invention  and  anticipation. 
(C.  C,  E.  D.  Mo.  E.  I).     Jan.   10,  1899.) 

Adams,  J.]      *Falk  Mfg.  Co.  r.  Missouri  Ry.  Co.  ct  al.,  91  Fed. 
Rep.  155. 

8.  The  patent  to  Kenney,   No.  549,370,  Nov.  5,  1895,  for  a 
device  for  holding  woven  wire  fabrics,  is  for  a  mechanical  con- 
ception and  appliance  ])ure  and  simple,  discloses  no  patentable 
invention  and  is  void.     (C.  C,  D.  Mass.     Dec.  8,  1898.) 
Aldricii,  J.]      *  Kenney  r.  Bent,  91  Fed.  Rep.  259. 


244  PATENTS. 

9.  The  patent  to  Cobnrn,  No.  365,240,  June  21,  1887,  for  a 
trolley  track,  Held,  void  as  to  claim  1,  for  lack  of  patentable  in- 
vention.     (C.  C,  D.  Mass.     Dec.  2,  1898.) 

Aldeich,  J.]     *Coburn  Trolley-Track  Mfg.  Co.  v.  Chandler  e< 
al,  91  Fed.  Rep.  260. 

10.  The  patent  to  Bragg,  No.  173,261,  Feb.  8,  1876,  for  an 
electro-magnetic  power  generator.  Held,  void  as  to  claim  2  for 
want  of  invention.     (C.  C,  N.  D.  111.     Nov.  28,  1898.) 
Grosscup,  J.]     *Ross  V.  City  of  Chicago,  91  Fed.  Rep.  265. 

11.  The  patent  to  Warren,  No.  589,676,  Sept.  7,  1897,  for  a 
spectacle  case.  Held,  void  for  want  of  invention.  (C.  C. ,  E.  D. 
Penn.  Feb.  2,  1899.)  (See  Patents.  Valid  but  not  in- 
fringed, §  13.) 

Dallas,  J.]     *  Warren  v.  Casey  et  al,  91  Fed.  Rep.  653. 

12.  The  patent  to  Way,  No.  593,954,  Nov.  16,  1897,  for  a 
chest  and  neck  protector.  Held,  void  for  want  of  invention.  (C. 
C,  E.  D.  Penn.     Jan.  18,  1899.) 

Dallas,  J.]     *Way  v.  McClarin,  91  Fed.  Rep.  663. 

13.  The  reissue  patent  to  Stieringer,  No.  11,478,  Mar.  12, 
1895  (original  No.  259,235,  June  6,  1882),  for  an  improvement 
in  electrical  fixtures,  Held,  void  as  to  claim  1  as  not  being  sup- 
ported bj"  the  claims  and  specification  of  the  original  patent 
and  for  unreasonable  delay  in  applying  for  reissue.  (C.  C.  A., 
3dCir.     Dec.  21,  1898.) 

Acheson,  J.]     *Horn  &  Branner  t;.  Pelzer,  91  Fed.  Rep.  665. 

14.  The  patent  to  Lettelier,  No.  482,484,  Sept.  13,  1892,  for 
a  machine  for  making  box  binding  channel  strips,  construed 
and  Held,  void  for  want  of  invention.  (C.  C,  S.  D.  Cal. 
Jan.  30,  1899.) 

Wellborn,  J.]     *  Lettelier  v.  Mann  et  al,  91  Fed.  Rep.  909. 

15.  The  patent  to  Lettelier,  No.  549,375,  Nov.  5,  1895,  for 
an  improvement  in  box  machines,  Held,  void  on  account  of 
prior  public  use,  of  more  than  two  years.  (C.  C. ,  S.  D.  Cal. 
Jan.  30,  1899.) 

Wellborn,  J.]     *  Lettelier  v.  Mann  et  al,  91  Fed.  Rep.  917. 

16.  The  patent  to  Schrei,  No.  547,185,  Oct.    1,  1885,  for  an 


PATKNTS.  245 

improvement  in  refrigerator  crates,  Held,  void  for  lack  of  in- 
vention.     (C.  C.  A.,  7th  Cir.     Feb.  1(5,  1809.) 
BuNX,  J.]     *Schrei  d  air.  Morris  etal.,  91  Fed.  Kep.  992. 

17.  The  patent  to  Jackson  and  Piatt,  No.  429,580,  Jnne  3, 
1890,  for  a  button,  construed  and  Held,  not  infringed  by  a 
button  made  under  the  patent  of  Shepley,  No.  548,143,  Oct.  15, 
1895,  or  if  construed  to  cover  the  Shipley  button  then  it  is  void 
for  lack  of  novelty.  (C.  C,  D.  Conn.  Jan.  24,  1899.) 
TowxsEXD,  J.]     *  Patent  Button  Co.   v.   Scovill   Mfg.   Co.,   92 

Fed.  Rep.  151. 

18.  The  patent  of  Gaitley,  No.  338,506,  Mar.  23,  1886,  for  a 
bail  for  lifting  and  carrying  kettles,  Held,  void  for  want  of 
invention.     (C.  C,  N.  D.  N.  Y.     Feb.  27,  1899. ) 

CoxE,  J.]     *  Gaitley  i:  Greene,  92  Fed.  Rep.  367. 

19.  The  patents  to  Wardwell,  No.  480,158,  Aug.  2,  1892,  for 
a  method  of  winding  cops,  and  No.  486,745,  Nov.  2,  1892,  for  a 
cop  which  is  the  product  of  such  process,  Held,  void  for  lack  of 
novelty.     (C.  C.  A.,  2d  Cir.     Jan.  25,  1899.) 

Per  Curiam.]     *  Universal  Winding  Co.  r.  Willimantic  Linen 
Co.,  92  Fed.  Rep.  391. 

20.  The  patents  to  Chambers,  Nos.  207,  343,  Aug.  27,  1878,  as 
to  claim  6,  297,675,  Aug.  29,  1884,  as  to  claim  2  and  275,467, 
Apr.  10,  1883,  as  to  claim  1.  Held,  void  for  lack  of  invention. 
(C.  C.  A.,  6th  Cir.     Mar.  7,  1899.) 

Taft,  J.]     ^Penfield  v.  Chambers  Bros.  Co.,  92  Fed.  Rep.  630. 

21.  The  patent  to  Loewenbach,  No.  390,087,  Sept.  25,  1888, 
for  an  improvement  in  receipt  and  record  books.  Held,  void  for 
want  of  invention.      (C.  C.  A.,  7th  Cir.     Feb.  23,  1899.) 

Per  Curiam.]     *  Loewenbach  v.  Hake-Stirn  Co.  etal.,  92  Fed. 
Rep.  661. 

22.  The  patent  to  Warren,  No.  389,993,  Sept.  25,  1888,  for 
an  improved  dress  or  garment  stay.  Held,  void  for  want  of 
novelty.     (C.  C,  D.  Conn.     Feb.  22,  1899.) 

TowxsEXD,   J.]     *  Warren   Fcatherbone  Co.    v.    Warner  Bros. 
Co.,  92  Fed.  Rep.  990. 

23.  The  patent  to  Parsons,  No.  386,108,  Aug.  9,  1887,  for  a 
machine  for  cutting  leather  or  other  materials,  construed  and 


246  PATENTS. 

Held.,  invalid  as  to  claims  3  and  4  and  not  infringed  as  to  claim 

5.     (C.  C,  D.  Mass.     Feb.  24,  1899.) 

Brown,  .J.]     *  Parsons  i'.  Seelye,  92  Fed.  Rep.  1005. 

24.  The  patent  to  Palmer,  No.  272,311,  Feb.  13,  1883,  for 
improvements  in  hammocks,  Hdd,  to  be  void  as  to  claims  4  and 
8,  unless  construed  as  limited  to  the  exact  construction  set  forth 
in  the  specification  and  claims,  in  wiiich  case  they  are  not 
infringed.      (C.  C.  A.,  2d  Cir.      Mar.  1,  1S99.) 

Per  Curiam.]     *  Palmer  r.  Curnen  et  a/.,  93  Fed.  Rep.  464. 

25.  The  patent  to  Smith,  No.  315,672,  Apr.  14,  1885,  for  an 
improvement  in  loops  for  bridles.  Held,  void  for  lack  of  inven- 
tion.    (C.  C,  N.  D.  N.  Y.     Apr.  12,  1899.) 

CoxE,  -J.]     *  Smith  /•.  Maxwell,  93  Fed.  Rep.  466. 

26.  The  patent  to  Ewig,   No.  408,300,  Mar.  9,  1890,  for  an 
improved  waistband  fastener,  Held,  void  for  anticipation   and 
lack  of  invention.      (C.  C.  A.,  7th  Cir.      Feb.  7,  1899.) 
Woods,  J.]     *  Rubens  et  al.  v.  Wheatfield,  93  Fed.  Rep.  677. 

27.  The  patent  to  Corser,  No.  366,621,  July  12,  1887,  for  im- 
provements in  overalls,  Held,  void  for  want  of  invention.  (C. 
C,  D.  Ver.     Apr.  1,  1899.) 

Wheeler.   -T.]     *  Corser   r.   Brattleboro   Overall  Co.,   93  Fed. 
Rep.  805. 

28.  The  patent  to  Corser,  No.  364,219,  June  7,  1887,  for 
improvements  in  coats  and  methods  of  niaking  them,  Held,  void 
as  to  all  but  the  3d  claim  for  want  of  invention.  (C.  C,  D. 
Ver.     Apr.  1,  1899.) 

^^'HEELER,   J.]      *  Corser  r.    Brnttlelioro   Overall   Co.,    93  Fed. 
Rep.  809. 

29.  The  patent  to  Christy,  No.  532,444,  Jan.  15,  1895,  for  a 
bicycle  saddle.  Held,  void  for  lack  of  invention.  (C.  C.  A.,  4th 
Cir.     May  2,  1899.) 

GoFF,  J.]     *  Christy  et  al.  v.  Hygeia  Pneumatic  Bicycle  Saddle 
Co.,'  93  Fed.  Rep.  965. 

30.  The  patent  to  Wohlfarth,  No.  543,072,  July  23,  1895,  for 
an  improvement  in  brake-shoes,  Held,  void  for  want  of  inven- 
tion.     (C.  C,  N.  D.  N.  Y.     Apr.  12,  1899.) 

CoxE,    J.]     *Lappin    Brake-Shoe  Co.   r.    (V)rning  Brake-Shoe 
Co.,  94  Fed.  Rep.  162. 


PATENTS.  247 

31.  The  patent  to  Lohbiller,  No.  49(),0o8,  A])r.  25,  189H,  r..r 
improvements  in  safety  valves,  Held,  void  for  lack  of  invention. 
(C.  C.  A.,  1st  Cir.     May  4,  1899.) 

PTTTNA^f,   J.]     *  Crosby   Steam   Gage   c'e   Valve  Co.    r.    Asliton 
Valve  Co.,  94  Fed.  Hep.  51(). 

82.  The  patent  to  Lyons,  No.  578,789,  Dec.  22,  189G,  for  im- 
provements in  hat  boxes  or  trunks,  IlchJ,  void  on  its  face  for  lack 
of  patentable  invention.  (C.  C,  S.  D.  N.  Y.  May  28,  1899.  ) 
Shipman,  J.]     --Lyons  r.  Bishop  etal,  95  Fed.  Rep.  154. 

38.  The  patent  to  Maier,  No.  803,393,  Apr.  12,  1884,  for  a 
spring  l)ed-bottom,  Held,  void  on  the  ground  of  abandonment 
of  invention  as  shown  by  the  record,  and  also  that  the  claims 
cover  an  unpatentable  aggregation.  (C.  C,  D.  N.  J.  May  25, 
1899.) 
Gray,  J.]     ^  Maier  et  al.  v.  Bloom  et  nl,  95  Fed.  Rep.  159. 

34.  The  reissue  patent  to  Hedbavny,  No.  11,079,  May  27, 
1890,  (original  No.  408,879)  for  a  machine  for  removing  hairs 
from  fur  skins.  Held,  void  as  to  claims  1  and  2  for  want  of  in- 
vention; claim  8,  if  valid,  must  be  limited  to  the  precise  con- 
struction shown,  and  neither  it  nor  claim  4  is  infringed  by  the 
patent  to  Jenik,  No.  557,129,  of  189G.  (C.  C,  S.  D.  N.  Y. 
June  18,  1899.) 

TowNSEND,  J.]     *Cimiotti   Unhairing  Co.  et  <d.  r.  Bowsky,  95 
Fed.  Rep.  474. 

35.  The  design  patent  to  Sagendorph,  No.  17,235,  for  a  de- 
sign for  metallic  siding  for  buildings.  Held,  void  as  anticipated 
by  the  patent  to  Hardy,  No.  168,991,  .Tune,  1875.  (C.  C,  E. 
D.  Penn.     July  10,  1899.) 

!McPhersox.  J.]      ^Sagendorph  r.  Hughes,  95  Fed.  Rep.  478. 

86.  The  patent  to  Baker,  No.  437,961,  Oct.  7,  1890,  for  an 
improvement  in  trolley  devices  for  electric  railways.  Held,  an- 
ticipated by  prior  patents  for  throwing  glass  Ijalls,  and  void. 
(C.  C,  D.  N.  J.     July  7,  1899.) 

KiRKPATRUK,  J.]  *  Thomson-Houston  Electric  Co.  r.  Rahway 
Electric  Light  c^-  Power  Co.,  95  Fed. 
Rep.  660. 

87.  The  patent   to  Rulifson,  No.  864,608,  June  7,  1SS7,  for 


248  PATENTS. 

improvements  in  bean-harvesters,  construed  in  view  of  the 
prior  state  of  the  art  and,  Held,  void  as  to  claims  1,  3,  4,  7,  8 
and  9,   for  lack  of  invention.      (C.  C,   N.  D.  N.  Y.     July  6, 

1899.) 

CoxE,  J.]     *Rulifson  et  al  v.  Johnson,  95  Fed.  Rep.  825. 

38.  The  patent  to  Shoe,  No.  558,218,  Apr.  14,  1896,  for  im- 
provements in  bicycles  saddles,  Held,  void  for  lack  of  patent- 
able invention.      (C.  C,  E.  D.  Penn.     Aug.  9,  1899.) 

Gray,  J.]     *Shoe  v.  Gimbel  et  al,  96  Fed.  Rep.  96. 

39.  The  patent  to  Stokes,  No.  408,936,  Aug.  13,  1889,  for  a 
method  of  forming  teeth  on  a  rasp  blank,  Held,  void  as  covering 
the  mechanical  operation  or  function  of  a  machine.  (C.  C. ,  D. 
N.  Jer.) 

KiRKPATRicK,  J.]     *  Stokes  Bros.   Mfg.  Co.  v.  HeWer  et  al. ,  96 
Fed.  Rep.  104. 

40.  The  patent  to  Orr,  No.  456,202,  Apr.  30,  1890,  for 
improvements  in  fire  proof  buildings,  construed  and  Held,  void 
for  want  of  invention  in  view  of  the  prior  art.  (C.  C. ,  E.  D. 
Penn.     Aug.  7,  1899.) 

McPherson,  J.]     *New  Jersey  Wire-Cloth  Co.  v.  Merrill  et  cd., 
96  Fed.  Rep.  216. 

41.  The  patent  to  Lawrence,  No.  295,180,  May  18,  1884,  for 
a  process  of  treating  milk,  construed  and  Held,  void  for  lack  of 
patentable  invention  and  for  anticipation.  (C.  C. ,  N.  D.  111. 
N.  D.     July  27,  1899. ) 

KoHLSAAT,  J.]  *Burrell  et  al.  v.  Elgin  Creamery  Co.,  96  Fed. 
Rep.  234. 

42.  The  patent  to  Perkins,  No.  501,537,  July  18,  1893,  for 
an  improvement  in  the  method  of  repairing  asphalt  pavements. 
Held,  void  for  anticipation.  (C.  C,  N.  D.  Ill,  N.  D.  June  7, 
1899. ) 

KoHLSAAT,  J.]  *  United  States  Repair  &  Guaranty  Co.  v. 
Assyrian  Asphalt  Co.  et  al. ,  96  Fed.  Rep. 
235. 

43.  The  patent  to  Leslie,  No.  581,123,  Apr.  20,  1897,  for  an 
improvement  in  temporary  binders,  known  as  "  jie^'P^tual 
ledgers,"  construed  and  Held,  void  as  to  claims  8  to  13,  inclu- 


PATEXTS.  24*.) 

sive,  for  lack  of  patentable  invention.      (C.  C,  X.  D.  111.  X.  I). 
June  G,  1899.) 

KoHLSAAT,  J.]  -■^William  Mann  Co.  v.  Hoffman,  9G  Fed.  Rep. 
237. 
44.  The  patent  to  Davey,  No.  555,434,  Feb.  25,  1S96,  for  an 
improvement  in  pegging-maebines,  Held,  void  as  to  claims  1,  2, 
3  and  10,  for  lack  of  invention.  (C.  C,  1).  INIass.  Aug.  4, 
1899.) 

Brown,  J.]     *  Davey  Pcgging-Macb.  Co.  r.  Isaac  Prouty  <K:  Co., 
etal,  96  Fed.  Rep.  336. 

46.  The  patent  to  Chatillon,  No.  304,172,  Aug.  26,  1884,  for 
an  improvement  in  scale-pans,  which  consists  in  applying  to  an 
enameled  flanged  scale-pan,  a  protecting  metal  ring  which  over- 
laps the  edge  of  the  pan  and  the  bottom  edge  of  the  flange, 
Held.,  void  for  want  of  invention.  (C.  C,  S.  D.  N.  Y.  Aug. 
7,  1899.) 

TowNSEXD,  J.]     *  Chatillon   r.  Forschner  et  al.,   96  Fed.  Rep. 
342. 

47.  The  patent  to  Way,  No.  593,954,  Nov.  16,  1897,  for  chest 
and  neck  pratector.  Held,  void  for  want  of  novelty,  91  Fed.  Rep. 
663,  Sand.  Pat.  Dig.  1899,  affirmed.  (C.  C.  A.,  3d  Cir.  May 
9,  1899.) 

BuFFiNGTON,  J.]     *  Way  V.  McClarin,  96  Fed.  Rep.  416. 

48.  The  patent  to  Hawley,  No  447,179,  Feb.  24,  1891,  for  an 
improvement  in  furnaces,  Held,  anticipated  and  void.  (C.  C. , 
E.  D.  Mo.  E.  D.     .June  26,  1899.) 

Adams,  J.]     *  Springfield   Furnace  Co.   et  al.  v.   Miller  Down- 
Draft  Furnace  Co.  et  cd.,  96  Fed.  Rep.  418. 

49.  The  patent  to  Johnston,  No.  490,849,  .Jan.  31,  1893,  for 
an  improvement  in  ore  concentrators,  Held,  void  in  view  of  the 
prior  state  of  the  art.      (C.  C,  N.  D.  Cal.     Aug.  7,  1899. 
Morrow,  J.]     *  Johnston  v.  Woodbury,  96  Fed.  Rep.  421. 

50.  The  patent  to  Covert,  No.  208,157,  Sept.  18,  1878,  for  an 
improvement  in  rope  clamps.  Held,  anticipated  and  void.  (C. 
C,  S.  D.  N.  Y.     Aug.  9.  1899.) 

TowNSEND,  J.]     *  Covert  v.  Travers  Bros.  Co.,  96  Fed.    Rep. 

568. 


250  PATENTS. 

51.  The  patent  to  Westingliou.se,  No,  270,867,  Jan.  16,  1883, 
for  improvements  in  electric  circuits'  for  railway  signalling, 
Held,  void  because  of  two  3'ears  ])rior  ])ul)lic  use  and  descrip- 
tion and  publication  more  than  tAVO  years  prior  to  application 
for  the  patent.      (C.  C.  A.,  3d  Cir.     Sept.  18,  1899.) 

KiRKPATEicK,  J.]  *  Union  Switch  &  Signal  Co.  et  nl.  v.  Phila- 
adelphia  ct  Reading  R.  R.  Co.  et  al.,  96 
Fed.  Rep.  761. 

52.  The  patent  to  Sperry,  No.  267,032,  Nov.  7,  1882,  for  a 
fanning  mill,  discloses  a  combination  of  old  elements  producing 
no  new  results,  and  Held,  void  for  lack  of  invention.  (C.  C. , 
D.  Minn.,  4th  Div.     Oct.  19,  1899.) 

LocHREN,  J.]     *  Sperry  Mfg.  Co.  r.  J.  L.  OAvens  Co.,  96  Fed. 
Rep.  975. 

53.  The  patent  to  Barrett,  No.  511,923,  Jan.  2,  1894,  for  an 
improvement  in  lifting  jacks,  Held,  void  for  lack  of  invention. 
(C.  C,  D.  Mass.     Oct.  4,  1899.) 

Putnam,  J.]      ^'- Duff  ]\Ifg.  Co.  r.  Norton,  96  Fed.  Rep.  986. 

54.  The  patent  to  Potts  and  Potts,  No.  368,898,  Aug.  23, 
1887,  for  an  improvement  in  clay  disintegrators,  construed  and 
Held,  void  for  lack  of  patental)le  invention.  (C.  C.  A.,  6th 
Cir.     Oct.  23,  1899.) 

Taft,  J.]     *C.  tt  A.  Potts  c^'  Co.  r.  Creager  et  al.,  97  Fed.  Rep. 

78. 

55.  The  patent  to  Stevens  &  Harrison,  No.  546,360,  Sept.  17, 
1895,  for  a  method  of  producing  a  |)yroxyline  compound  in 
imitation  of  onyx,  Held,  void  for  lack  of  novelty  and  inven- 
tion. 

The  patent  to  Thurl)er  &  Schaefer,  No.  542,452,  July  9, 
1895,  for  an  improvement  in  celluloid  articles  and  process  of 
manufacturing  the  same.  Held,  void  both  as  to  product  and  as 
to  process.  (C.  C.  A.,  3d  Cir.  Sept.  22,  1899.) 
Bradford,  J.]  *  Arlington  Mfg.  Co.  r.  Celluloid  Co.,  97  Fed. 
Rep.  91. 

56.  The  design  patent  to  Schmid,  No.  21,416,  Mar.  22,  1892, 
for  a  design  for  the  frame  of  an  electric  machine.  Held,  void  as 


PHACTICK    IN    TIIK    TNITKI)    STATES    COrHTR.  251 

not  disclosing  patent:il)k'  invention.      (C.  C.  A.,  Gth  Cir.      Oct. 
3,  1899.) 

Taft,    J.]     *  Westinghouse    Electric    it   Mfg.   Co.    v.   Tiiumiih 
Electric  Co.,  97  Fed.  Rep.  99. 

57.  The  patent  to  Taylor,  No.  878,107,  Nov.  15,  1887,  for  an 
improved  lock,  construed  and  Held,  void  for  lack  of  invention. 
(C.  C,  D.  Conn.     Sept.  5,  1899.) 

TowxsENi).  J.]     *  Yale  ct  Towne  Mfg.  Co.  '•.  Sargent  &  Co.,  97 
Fed.  Rep.  106. 

58.  The  patents  to  McBride,  No.  199,082,  Jan.  8,  1878,  and 
No.  284,036,  Aug.  28,  1883,  for  improved  riding  attachments 
for  plows,  Held,  anticii)ated  and  void.  (C.  C.  A.,  8th  Cir. 
Oct.  9,  1899.) 

Sanborn,  J.]  *  McBride  v.  Kingman  et  al.  Same  r.  Sickels 
et  (d.  Same  v.  Randall  et  al.  Same  v.  Ains- 
worth  et  al,  97  Fed.  Rep.  217. 

59.  The  patent  to  Kenney,  No.  549,370,  Nov.  5,  1895,  for  a 
device  for  holding  woven  wire  fabrics  on  a  mattress  frame,  Held, 
void  as  to  claim,  for  lack  of  patentable  invention.  (C.  C.  A., 
1st  Cir.     Sept.  14,  1899.) 

Putnam,  J.]     *  Kenney  r.  Bent,  97  Fed.  Rep.  337. 

r>0.  The  patent  to  Kisinger,  No.  492,811,  Mar.  7,  1893,  for  a 
trolley-wire  connector,  Held,  antici]jated  by  the  Moirison  pat- 
ent, No.  428,123,  May  20,  1890,  and  void."  (C.  C.  A..  6th  Cir. 
Oct.  3,  1899.) 

Taft,  J.]     *Kisinger-Ison  Co.  v.  Bradford  Belting  Co.,  97  Fed. 
Rep.  502. 

61.   The  patent  to   Hoffman,  No.  450,124,  Apr.  7,  1891,  for 
improvements  in  storage  cases  for  books,  Held,  void  as  to  clainjs 
1  and  2.     (Sup.  Ct.  U.  S.     :May  14,  1899.) 
Brown,    J.]     *  Office  Specialty   Mfg.    Co.    r.    Fcnton    >retallic 
Mfg.  Co.,  87  O.  (4.  1608. 

Practice  in  the  United  States  Courts. 

Where  the  lower  court  correctly  instructed  the  jury  in  relation 
to  the  law  applicable  to  each  of  the  questions  of  novelty  and 
infringement,  they  being  mixed  questions  of  law  and  fact,  the 
verdict  of  the  jury  is  conclusive  on  writ  of  error  to  an  appellate 


252 


PRINTS. 


court  as  to  every  fact  embraced  -witliin  the  issues  submitted  to 
the  jury  for  decision,  unless  there  Avas  an  entire  want  of  evi- 
dence upon  which  to  Ijase  the  verdict  returned  by  the  jury. 
This  results  from  the  well-settl(>d  rule  that  on  a  writ  of  error  the 
appellate  court  can  only  consider  errors  of  law,  and  that  the 
review  under  such  writ  does  not  extend  to  matters  of  fact.  (C. 
C.  A.,  9th  Cir.     Oct.  18,  1897.) 

De  Haven,  J.]     *  Graham  v.  Earl,  82  Fed.  Rep.  737;  92  Fed. 
Rep.  155. 

Prints. 

1.  An  arbitrary  and  fanciful  representation  to  be  placed  upon 
cards  and  letter-heads  as  an  ornamentation  thereof  is  not  a  print 
within  the  meaning  of  the  coj^yright  law^  such  as  may  be  regis- 
tered in  this  Office.     (May  31,'  1899. ) 

Greeley,  A.  C.]     Ex  parte  Barnhart  Bros.  &  Spindler  87  0.  G. 
2118. 

2.  When  an  alleged  print  possesses  artistic  merit,  but  does 
not  relate  to  the  trade  or  pertain  to  an  article  of  manufacture 
within  the  meaning  of  the  statute,  which  requires  that  it  shall 
be  for  some  article  of  manufacture,  Held,  that  it  is  not  regis- 
trable as  a  print,  whatever  right  the  designer  may  have  to  pro- 
tection in  some  other  form.  Id. 

3.  "For  any  article  of  manufacture"  in  the  statute  and 
"pertaining  to  an  article  nf  manufacture"  in  the  rule  have  ref- 
erence to  the  subject-matter  of  the  print  itself,  and  if  that  sub- 
ject-matter does  not  suggest  or  in  some  manner  indicate  some 
other  article  of  manufacture  it  is  not  registrable  in  this  Office. 
The  article  indicated  must  be  separate  and  independent  of  the 
print  itself.  Id. 

4.  Aside  from  the  rule  that  a  print  to  be  registrable  must  not 
be  borne  by  the  article  to  w'hich  it  pertains,  Held,  that  the  al- 
leged print  in  this  case  does  not  pertain  to  cards  and  letter- 
heads within  the  meaning  of  the  statute,  since  its  subject-mat- 
ter does  not  suggest  them,  and  it  is  merely  an  ornamental  de- 
sign which  might  be  placed  upon  a  variety  of  articles.        Id. 

5.  Proofs  or  prints  do  not  pertain  to  the  plate  from  which 
printed  in  the  sense  of  the  statute  requiring  that  they  shall  be 
for  an  article  of  manufacture.     To  so  hold  would  render  mean- 


PKIOR    ADJUDICATION.  253 

ingless  the  statutes  distin^nus]iin<i;  iK'twcen  co])vriglits,   j)rints 
and  designs.  Id. 

6.  Prints  are  designed  to  give  protection  in  tlie  use  of  the 
print  itself  in  whatever  manner  produced  as  a  representation  or 
indication  of  the  article  of  manufacture  to  wliich  it  i)ertains, 
l)ut  not  in  the  manufacturw  and  use  of  the  article  itself.      Id. 

Pi'ints  and  Labels. 

Department  of  the  Interior, 

Umted  States  Patent  Office, 

Washington,  D.  C,  March  3,.  1899. 
The  attention  of  all  persons  ordering  copies  of  Prints  and  La- 
bels from  this  Office  is  respectfully  called  to  the  following  no- 
tice, in  view  of  w'hich  a  written  statement,  setting  forth  the  par- 
ticular use  to  which  the  copy  is  to  be  applied,  will  in  each  case 
be  required: 

Department  of  thk  Inteuior, 

United  States  Patent  Office, 

Washington,  D.  C,  Jmiuanj  SO,  1899. 
Hereafter  copies  of  Prints  and  Labels  will  be  furnished  only  upon  an  order  from  the 
Commissioner. 
By  direction  of  the  Commissioner. 

Prior  Adjudication. 

1.  The  matters  in  controversy  in  the  present  suit  are  not  res 
adjudicata  by  reason  of  the  case  of  Norton  r.  Jensen,  7  U.  S. 
Ap.  103;  1  C.  C.  A.  452;  49  Fed.  Rep.  859.  The  parties  are 
the  same;  the  patents  here  involved  are  the  same  as  were  held 
valid  as  against  Jensen's  first  machine  in  that  suit.  But  here  a 
different  patent  of  Jensen's  is  now  involved,  not  the  same  but  a 
second  patent  which  the  Patent  Ofhce  deemed  proi)er  to  allow 
him.  There  is  prima  facie  a  lack  of  identity  in  the  subject- 
matter  of  the  two  cases,  and  therefore  upon  the  face  of  the 
record  there  is  no  estoppel  either  in  judgment  or  in  evidence. 
(C.  C.  A.,  9th  Cir.     Oct.  24,  1898.) 

MoRROAV,  J.]     *  Norton  et  al.  r.  Jensen,  Fed.  Rep.  415. 

2.  Where,  in  a  prior  suit  at  law  for  the  infringement  of  a 
patent,  the  verdict  and  judgment  were  based  upon  the  ground 
that  the  patent  was  a  mere  adaptation  of  the  device  of  a  })rior 
patent,  and  therefore  invalid,  Held,  that  the  judgment  thus 
given — the  court  having  jurisdiction  of  the  subject-matter  and 


254  PRIOR    ADJUDICATION. 

of  the  parties — is  good  as  a  plea  in  bar,  and  conclusive  when 
given  in  evidence  in  a  subsequent  suit  between  the  same  parties 
or  their  privies,  upon  the  same  point,  not  only  of  the  invalidity 
of  the  patent  sued  upon,  but  also  that  articles  made  in  con- 
formity with  that  patent  are  substantial  copies  of  the  device  of 
the  prior  patent.  (C.  C,  8.  D.  Cal.*  Nov.  21,  1898.) 
Ross,  J.]     *  Newton  Mfg.  Co.  r.  Wilgus,  90  Fed.  Rep.  483. 

3.  To  ai)ply  a  prior  judgment  and  give  effect  to  the  adjudi- 
cation actually  made,  resort  may  be  had  to  extrinsic  evidence, 
such  for  example  as  the  special  verdict  of  the  jury,  and  the 
evidence  in  the  prior  suit  as  embodied  in  the  transcript  of  the 
record  of  that  suit.  */r/. 

4.  Where  an  ai)})licant  appealed  to  the  Court  of  Appeals  from 
the  decision  of  the  Commissioner  of  Patents,  holding  that  his 
invention  was  without  patentable  novelty,  and  the  court  sus- 
tained the  decision  of  the  Commissioner  and  suggested  to  appli- 
cant to  file  a  bill  in  equity,  and  applicant  instead  of  following 
the  suggestion  filed  a  new  application  for  the  same  matter  that 
was  in  the  first  application.  Held,  on  appeal  to  the  court  on  the 
second  application,  that  the  question  of  patentable  novelty  will 
not  be  again  passed  upon,  as  that  question  is  res  adjudicata. 
(C.  A.  D.  C.     Feb.  9,  1899.) 

Morris,  J.]     *  Barratt  v.   Duell,   Comr.   of  Patents,   87  0.  G. 
1075. 

5.  \Mien  an  application  for  patent  is  after  due  examination 
rejected  and  finally  determined  against  the  applicant  after 
exhaustion  of  the  right  of  appeal  allowed  to  him.  Held,  that  it 
is  not  incumbent  upon  the  Patent  Office  as  a  duty  to  entertain 
such  second  application,  and  that  if  the  Commissioner  refuses 
to  entertain  it  he  has  a  perfect  legal  right  to  do  so.  *  Id. 

().  There  is  no  provision  of  law  for  a  second  application  where 
a  previous  application  has  been  adjudicated  and  a  patent  denied. 
The  absence  of  such  provision  is  sufficient  evidence  that  the 
right  to  have  a  second  application  considered  after  the  refusal  of 
a  patent  upon  a  previous  application  does  not  exist.         */f/. 

7.  While  the  rules  that  govern  the  finality  and  conclusiveness 
of  adjudication  at  the  common  law  do  not  apply  in  the  strict 
sense  to  administrative  or  quasi-judicial  actions  in  the  Execu- 


PROTECTION    TO    I'ATKNT^:.  255 

live  Departments  of  tlie  Goveniiuent,  yet  in  such  actions  as  well 
asin  judicial  proceedings  it  is  both  expedient  and  necessary 
that  there  should  be  an  end  to  controversy.  *  Id. 

8.  Where  in  a  court  of  law  there  has  been  one  investigation 
and  one  adjudication,  such  action  becomes  final  and  can  only 
be  reviewed,  if  at  all,  by  the  way  of  appeal.  Subsequent  suit 
for  the  same  subject-matter  and  between  the  same  parties 
cannot  be  sustained,  and  there  is  no  good  reason  why  the 
course  of  procedure  should  be  different  in  the  Patent  OHice. 

9.  The  principles  applicable  to  the  proceedings  in  the  Patent 
Office  are  so  nearly  akin  to  judicial  proceedings  as  to  be  most 
properly  designated  as  quasi-judicial,  and  it  is  only  by  regard- 
ing these  proceedings  as  such  that  the  validity  of  the  legislation 
which  authorizes  appeals  to  the  Court  of  Appeals  from  the  deci- 
sion of  the  Commissioner  of  Patents  can  be  sustained.       *  Id. 

10.  In  an  action  between  the  same  parties,  or  those  in  privity 
with  them  upon  the  same  claim  or  demand,  a  prior  judgment 
or  decree  upon  the  merits  is  conclusive  of  every  matter  that 
was  or  might  have  been  litigated  in  tiie  earlier  suit.  (C.  C.  A., 
8th  Cir.     June  19,  1899.) 

Sanborn,  J.]     *Fish  Bros.  Wagon  Co.  v.  Fish  Bros.  Mfg.  Co., 
95  Fed.  Rep.  457. 

Pi'otection  of  Patents  in  Tei'i'itory  Subject  to  Military 
Government  by  United  States  Forces. 

[^Circular  Xo.  12. ~\ 

Division  of  Customs  and  Insular  Affairs. 

War  Department, 
Washinyfim,  D.  C,  April  11,  1899. 
The  following  is  published  for  the  information  and  guidance 
of  all  concerned: 

In  territory  subject  to  mihtary  government  by  the  miHtary 
forces  of  the  United  States,  owners  of  patents,  including  design 
patents,  which  have  been  issued  or  which  may  hereafter  be  is- 
sued, and  owners  of  trade-marks,  prints,  and  labels,  duly  regis- 
tered in  the  United  States  Patent  Office  under  the  laws  of  the 
United  States  relating  to  the  grant  of  patents  and  to  the  regis- 


256  PROTECTION  TO  PATENTS. 

tration  of  trade  marks,  prints,  and  labels,  shall  receive  the  pro- 
tection accorded  them  in  the  United  States  under  said  laws; 
and  an  infringement  of  the  rights  secured  by  a  lawful  issue  of 
a  patent  or  by  registration  of  a  trade-mark,  jn-int,  or  label,  shall 
subject  the  person  or  party  guilty  of  such  infringement  to  the 
liabilities  created  and  imposed  by  the  laws  of  the  United  States 
relating  to  said  matters:  Provided,  That  a  duly  certified  copy  of 
the  patent  or  of  the  certificate  of  registration  of  the  trade-mark, 
print,  or  label,  shall  be  filed  in  the  ofhce  of  the  Governor 
General  of  the  island  wherein  such  protection  is  desired;  and. 
Provided  further',  That  the  rights  of  property  in  jiatents  and  trade- 
marks secured  in  the  Islands  of  Cuba,  Poi'to  Rico,  the  Philip- 
pines, and  other  ceded  territory,  to  persons  under  the  Spanish 
laws,  shall  be  respected  in  said  territory,  the  same  as  if  such 
laws  were  in  full  force  and  effect. 

G.  D.  Meiklejohn, 
Acting  Secretary  of  War. 

l_Ciradar  No.  21.~\ 

Division  of  Customs  and  Insular  Affairs. 

"War  Department, 
Washington,  D.  C,  June  1,  1899. 

The  following  is  published  for  the  information  and  guidance 
of  all  concerned: 

Parties  who  desire  protection  in  territory  under  government 
of  the  military  forces  of  the  United  States  for  patents,  trade 
marks,  prints,  or  labels,  as  provided  in  Circular  No.  12,  Divi- 
sion of  Customs  and  Insular  Affairs,  War  Department,  should 
forward  a  certified  copy  of  the  patent  or  of  the  certificate  of 
registration  of  the  trade-mark,  print,  or  label,  together  with  a 
letter  of  transmittal  to  the  Governor-General,  requesting  that 
such  copy  be  filed  in  his  ofhce  for  reference. 

Upon  the  receipt  of  such  certified  copy  the  Governor-General 
will  issue  his  formal  receipt  therefor  and  forward  it  to  the  party 
filing  the  same. 

A  fee  of  one  dollar  will  be  charged  for  filing  such  copy  and 
should  be  inclosed  with  the  letter  of  transmittal  to  the  Governor- 
General. 

The  requirements  for  filing  under  the  provisions  of  Circular 


I'HOTECTION  TO  PATENTS.  2o7 

No.  12,  above  referred  to,  a]){)ly  only  to  i)cit('nts  duly  issued, 
and  to  trade-marks,  prints,  or  labels  duly  registered  in  the 
United  States  Patent  Office  under  the  laws  of  the  United  States. 
The  only  certification  required  is  that  issued  by  the  Connnis- 
sioner  of  Patents.  Communications  should  be  addressed  to  the 
Governor-General  of  Cuba,  Havana,  Cuba;  or  Governor-General 
of  Porto  Rico,  San  Juan,  Porto  Kico;  or  Governor-drencral  of 
the  Philiiipine  Islands,  Manila.  Philippine  Islands. 

(i.  D.  Meiklejohn, 
Af<f!!f<tant  Serretory  of  War. 


[Circular  No.  ^^.] 

Division  of  Customs  and  Insular  Affairs. 

War  Department, 
Washinyton,  D.  C,  September  25,  1899. 
The  following  is  j)ublished  for  the  information  and  guidance 
of  all  concerned : 

So  much  of  Circular  No.  21,  of  the  Division  of  Customs  and 
Insular  Affairs,  War  Department,  dated  June  1,  1899,  as  re- 
quires the  payment  of  a  fee  for  filing  certified  copies  of  patents 
or  certificates  of  registration  of  trade  marks,  prints,  or  labels  is 
hereby  rescinded. 

Said  Circular  No.  21  is  hereby  further  amended  by  tlie  addi- 
tion thereto  of  the  following  paragraphs: 

"A  power-of-attorney  from  the  owner  thereof  authorizing 
another  for  him  and  in  his  name,  place  and  stead  to  file  a  certi- 
fied copy  of  a  patent  or  a  certificate  of  registration  of  a  trade- 
mark, print  or  label  must  be  filed  Avith  such  certified  copy  or 
certificate  of  registration  in  each  of  the  islands  wherein  the 
protection  of  such  patents,  trade-marks,  prints  or  labels  is  de- 
sired. 

"Assignments  of  patents,  trade-marks,  prints,  or  labels,  or 
certified  copies  thereof,  naust  be  filed  in  the  same  manner  as 
herein  provided  for  filing  certified  copies  of  patents  and  certifi- 
cates of  registration  of  trade-marks,  prints  or  labels." 

G-  D.  Meiklejohn, 
Amstafnt  Secretary  of  War. 
17 


258  REOPENING    CASES    IN    THE    PATENT    OFFICE. 

Reopening  Cases  in  the  Patent  Office. 

I.   Ex  Parte. 
II.   Interferences, 
I.   Ex  Parte. 

1.  The  exaniiners-in-chief  affirmed  the  rejection  by  the  exam- 
iner, whereupon  appeal  was  taken  to  the  Commissioner,  and  ap- 
pellant contends  that  the  case  was  not  in  condition  for  appeal, 
and  that  he  was  prematurely  forced  by  the  examiner  to  take 
such  appeal,  and  requests  that  the  case  be  remanded  to  the  ex- 
aminer for  reconsideration,  and  that  he  be  permitted  to  file  an 
amendment,  Held,  that  certain  of  the  appealed  claims  are  vague 
and  indefinite,  and  were  not  in  condition  for  appeal  at  the  time 
they  were  finally  rejected.  Under  such  circumstances  he  should 
have  been  given  an  opportunity,  and,  in  fact,  should  have  been 
required  to  make  such  claims  clear  and  definite  before  an  ap- 
peal was  permitted.  The  case  is  therefore  re-opened  and  re- 
manded to  the  examiner  for  further  consideration.  (June  1, 
1899.) 

Greeley,  A.  C]      Ei:  parte  Herzog,  67  MS.  Dec.  139. 

2.  Rule  142  provides  that  cases  decided  upon  appeal  will  not 
be  reopened  before  the  primary  examiner  without  specific  au- 
thority from  the  Commissioner,  and  it  is  the  settled  practice  of 
the  Office  not  to  re-open  such  cases  except  for  good  and  sufficient 
reasons.  Where  there  Avas  no  recommendation  by  the  exam- 
iners-in-chiei,  under  rule  139,  that  any  of  the  appealed  claims 
would  be  allowable  if  amended,  and  there  was  nothing  in  their 
decision  to  warrant  the  admission  of  the  amendment  presented, 
and  the  only  reason  given  for  the  failure  to  sooner  present  the 
amended  claims  was  that  applicant  did  not  realize  the  necessity 
for  amending  until  after  the  decisions  on  appeal,  Held,  that 
such  reason  is  insufficient  to  warrant  there-opening  of  the  case. 
(June  17,  1899.) 

Greeley,  A.  C]     Eo:  parte  Betz,  67  MS.  Dec.  194. 

3.  Where  a  case  was  remanded  by  the  examiners-in-chief  to 
the  primary  examiner  for  reconsideration,  the  entire  case  was 
re-opened,  and  it  was  necessar}^  for  him  to  use  his  own  judgment 
in  treating  the  claims  without  being  bound  by  the  opinions  of 


REOPENING    CASES    IN    THE    PATIENT    OFFICE.  259 

the  examiners-in-chiof ;  fur  if  he  were  to  he  absohitely  hound 
by  their  rulings  there  would  be  no  useful  purpose  served  in 
remanding  the  ease  to  him.      (June  29,  1899. ) 
Greeley,  A.  C]     Ex  parte  Hunter,  67  MS.  Dec.  248. 

4.  Where  an  applicant  was  furnished  by  the  office  with  a  de- 
fective copy  of  the  principal  reference  relied  on  in  the  rejection 
of  his  application  by  the  examiner,  the  board  of  examiners-in- 
chief  and  the  Commissioner,  Held,  that  the  case  should  be  re- 
opened and  remanded  to  the  examiner  with  instructions  to  enter 
and  consider  the  amendment  presented  and  such  other  amend- 
ments as  are  presented  in  regular  order.  (Dec.  7,  1899.) 
Greeley,  A.  C]     Ex  parte  Robertson,  68  MS.  Dec.  260. 

5.  Where  the  claims  of  an  application  have  been  finally  re- 
jected and  the  applicant  has  taken  and  prosecuted  an  appeal  to 
the  examiners-in-chief,  it  is  too  late  to  raise  ihe  question  whether 
the  examiner  in  his  rejections  fully  explained  the  pertinency  of 
the  references.      (Nov.  25,  1898.) 

Greeley,  A.  C]     Ex  parte  Hardie,  86  O.  G.  181. 

6.  While  the  Office  is  disposed  to  assist  applicants  unfamiliar 
with  the  practice  in  bringing  out  the  patentable  novelty  in  their 
cases,  the  practice  cannot  properly  be  carried  to  the  extent  of 
re-opening  cases  which  have  proceeded  as  far  as  this  one  has 
merely  for  the  purpose  of  further  amendment.  To  do  so  would 
make  it  practically  impossible  to  bring  the  prosecution  of  a  case 
to  a  conclusion,  and,  as  stated  in  ex  parte  Snow,  (80  0.  G. 
1271)— 

There  must  be  an  end  somewhere  to  the  prosecution  of  an  application,  and  the  Office 
is  justified  in  restricting  the  power  to  bring  up  lor  consideration  matters  which  should 
have  been  presented  and  disposed  of  prior  to  the  closing  of  the  case  before  the  primary 
examiner. 

hi 

II.   Interference. 

Where  judgment  of  priority  had  been  rendered  by  the  exam- 
iner of  interferences  and  his  action  affirmed  by  the  board  of 
examiners-in-chief,  a  petition  to  reopen  the  case  for  the  purpose 
of  presenting  additional  testimony  not  newly  discovered,  denied. 
(May  3,  1899.) 
Greeley,  A.  C]     Estes    o.  Gause,  88  0.  G.  1336. 


260  RULES   OF   PRACTICE. 

Repair  of  Patented  Machines. 

1.  The  purchaser  of  a  patented  machine  may  rej)air  the 
machine  which  he  has  purchased  by  replacing  worn  out  parts, 
so  long  as  the  identity  of  the  machine  is  not  destroyed.  The 
sale  of  an  entire  machine  carries  with  it  the  right  to  replace  a 
part  which,  in  relation  to  the  whole  structure,  is  temporary  in 
its  nature,  although  such  part  may  be  one  of  the  novel  or  valu- 
able devices  covered  by.  the  claims  of  the  patent.  But  the 
right  to  repair  does  not  include  the  right  to  build  a  new 
machine,  or  to  reconstruct  or  rebuild  an  old  one.  (Authorities 
cited.)     (C.  C,  N.  D.  Cal.     Mar.  16,  1899.) 

Morrow.  J.]     -!=  Alaska  Packer's  Ass' n  v.  Pacific  Steam  Whal- 
ing Co.  et  al,  93  Fed.  Rep.  672. 

2.  There  is  a  distinction  between  a  patent  covering  an  entire 
machine  composed  of  several  separate  and  distinct  parts,  and  a 
machine  not  patented  as  an  entirety,  but  in  parts,  and  such  parts 
covered  by  different  patents.  In  the  former  case  the  purchaser 
will  not  infringe  by  replacing  temporary  parts  as  they  wear  out, 
so  long  as  the  identity  of  the  machine  is  retained,  while  in  the  lat- 
ter, the  manufacture  and  sale  of  the  parts  constitute  infringe- 
ment. *  Id. 

3.  It  may  l)e  that  this  distinction  will  not  satisfactorily  de- 
termine all  cases,  particularly  where  separate  parts  are  covered 
by  separate  claims  in  the  patent:  but  the  other  distinction,  which 
gives  the  purchaser  of  a  patented  machine  under  an  ordinary 
sale  the  right  to  preserve  its  normal  life  by  replacing  temporary 
parts  when  worn  out,  is  a  distinction  that  can  be  a])plied  in  all 
cases  of  repair,  and  is  in  accordance  with  the  just  rights  of 
ownership  of  the  property.  ^Id. 

Rnles  of  Practice. 

Department  of  the  Interior, 

United  States  Patent  Office, 
Washington.  D.  C,  July  li,  1899. 
The  sixteenth  edition  of  the  Rules  of  Practice  of  this  Office 
has  been  adopted  and  duly  approved  by  the  Secretary  of  the 
Interior,  to  take  effect  on  July  18,  1899.  The  changes  made  in 
the  rules  of  the  fifteenth  revised  edition  of  June  18,  1897,  and 
the  second  edition  thereof,  December  1,  1897,  are  as  follows: 


RULES    OF    TKAtTn-K.  2(U 

Rules  9,  18,  25,  33,  41,  46,  47,  60,  77,  78,  91,  96,  107,  110,  112, 
124,  128,  149,  154,  156  and  162  are  amended,  the  changes 
noted  in  the  appendix  of  the  second  edition  of  December  1, 
1897,  and  those  appearing  in  The  Official  Gazette  since  the 
pubHcation  of  the  fiftcentli  edition  have  been  incorp<irated  in 
the  rules,  and  rule  214  lias  been  added. 

Forms  1  to  17  and  37  have  been  amended,  a  new  form  7 
added,  and  the  forms  renumbered  as  necessary. 

C.    H.    DUELL, 

Comuiissioner. 
Rules  9,  41  and  47  nx  Amended  to  Take  Effect  Juh/  IS,  1899. 

9.  A  separate  letter  should  in  every  case  be  written  in  relation 
to  each  distinct  subject  of  inquiry  or  application.  Assignments 
for  record,  final  fees,  and  orders  for  copies  or  abstracts  must  be 
sent  to  the  Office  in  separate  letters. 

Palmers  sent  in  violation  of  this  rale  ivill  be  returned. 

41.  Two  or  more  independent  inventions  cannot  be  claimed 
in  one  application;  but  where  several  distinct  inventions  are 
dependent  ujdou  each  other  and  mutually  contribute  to  produce 
a  single  result  they  may  be  claimed  in  one  application. 

A  machine,  a  process,  and.  a  product  are  separate  and  independent 
inventioiu,  and  claims  for  each  must  be  presented  in  a  separate  appli- 
cation. 

47.  If  the  application  be  made  by  an  executor  or  administra- 
tor of  a  deceased  person  or  the  cfuardian,  conservator  or  representa- 
tive of  an  insane  person,  the  form  of  the  oath  will  be  correspond- 
ingly changed. 

The  oath  or  atfirmation  may  be  made  before  any  person 
within  the  United  States  authorized  by  law  to  administer  oaths, 
or,  when  the  applicant  resides  in  a  foreign  country,  before  any 
minister,  charg^  d'affaires,  consul,  or  commercial  agent  holding 
commission  under  the  government  of  the  United  States,  or  be- 
fore any  notary  public  of  the  foreign  country  in  which  the 
applicant  may  be,  the  oath  being  attested  in  all  cases,  in  this 
and  other  countries,  by  the  proper  official  seal  of  the  ofiicer  be- 
fore whom  the  oath  or  affirmation  is  made.  When  the  person 
before  whom  the  oath  or  affirmation  is  made  is  not  provided 
with  a  seal,  his  official  character  shall  be  established   by  com- 


262  RULES    OF    PRACTICE. 

petent   evidence,  as  by  a,  certificate  from  a  clerk   of  a  court  of 
record  or  other  proper  officer  having  a  seal. 

An  oath  taken  before  a  notary  ■public  or  niaf/istrate  ivill  not  be  ac- 
cepted imless  a  certificede  of  the  official  character  of  the  p>eri<on  admin- 
istering the  oath,  dating  the  date  of  appointment  and  term,  of  office, 
is  filed.  To  obviate  the  necessity  of  a  separate  certificate  in  each  ap- 
plication, a  certificate  may  be  fnmished  with  the  request  that  it  be  filed, 
in  the  Patent  Office  for  general  reference. 

Department  of  the  Interior, 

United  States  Patent  Office, 
Washington,  D.  C,  September  2,  1899. 
Rule  47  of  the  Rules  of  Practice  in  the  United  States  Patent 
Office,  edition   of  July  18,  1899,  is  amended  by  canceling  the 
last  paragraph  thereof,  which  reads  as  follows: 

An  oath  taken  before  a  notary  public  or  magistrate  will  not  be  accepted  unless  a  cer- 
tificate of  the  official  character  of  the  person  administering  the  oath,  stating  the  date  of 
appointment  and  term  of  office,  is  filed.  To  obviate  the  necessity  of  a  separate  certifi- 
cate in  each  application,  a  certificate  may  be  furnished  with  the  request  that  it  be  tiled 
in  the  Patent  Office  for  General  reference. 

C.  H.  Duell, 
Approved :  Commissioner. 

E.  A.  Hitchcock, 

Secretarg  of  the  Interior. 

Department  of  the  Interk^r, 

United  States  Patent  Office, 
Washington,  D.  0.,  December  5,  1899. 
Rule  47  of  the    Rules  of  Practice  of  the  United  States  Patent 
Office,  edition  of  -July  18,  1899,  is  amended  to  read  as  follows: 

"  4".  If  the  application  be  made  by  an  executor  or  administrator  of  a  deceased  person 
or  the  guardian,  conservator,  or  representative  f)f  an  insane  person,  the  form  of  the  oath 
will  be  correspondingly  changed. 

"  The  oath  or  affirmation  may  be  made  before  any  person  within  the  United  States 
authorized  by  law  to  administer  oaths,  or,  when  the  applicant  resides  in  a  foreign 
country,  before  any  minister,  charge  d'affaires,  consul  or  commercial  agent  holding 
commission  under  the  Government  of  the  United  States,  or  before  any  notary  public  of 
the  foreign  country  in  which  the  applicant  may  be,  who  is  mdhorized  by  the  laws  of  his 
country  to  adminhter  oaths,  the  oath  being  attested  in  all  cases,  in  this  and  other  countries, 
by  the  proper  official  seal  of  the  officer  before  whom  the  oath  or  affirmation  is  made. 
When  the  person  before  whom  the  oath  or  affirmation  is  made  is  not  provided  with  a 
seal,  his  official  character  shall  be  established  by  competent  evidence,  as  by  a  certificate 
from  a  clerk  of  a  court  of  record  or  other  proper  officer  having  a  seal. 

"  When  the  oath  is  taken  be/ore  an  officer  in  a  country  foreign  to  the  United  States,  all  the 
application  papers  must  be  attached  together  and  a  ribbon  passed  one  or  more  times  through 
all  the  sheets  of  the  application,  and  the  ejids  of  said  ribbon  brought  together  under  the  seal  be- 
fore the  latter  is  affixed  and  impressed,  or  each  sheet  must  be  impressed  xoith  the  official  seal  of 


REVENUE   STAMPS.  263 

the  officer  before  whom  the  oath  was  taken,  or  if  he  is  not  provided  with  a  seal,  theii  tach  sheet 
must  be  initialed  by  him." 

C.    H.    DUELL, 

Commissioner. 

Department  of  the  Interior,  Dm  ih/mt  (J,  1899. 

Approved,  the  Inst  paragraph  of  this  rule  to  take  effect  M;iy 
1,  1900.  E.  A.  Hitchcock, 

Secretary  of  the  Interior. 

Revenue  Stamps. 

Department  of  the  Interior, 

United  States  Patent  Office, 
Washington,  D.  C,  September  16,  1898. 
The  attention  of  persons  having  business  before  this  Office  is 
called  to  the  following  ruling  of  the  Commissioner  of  Internal 
Revenue  in  relation  to  affixing  revenue  stamps  to  trade  mark, 
print,  and  label  certificates  issued  by  this  Office: 

Treasury  Department, 
Office  of  the  Commissioner  of  Internal  Revenue, 

Washiiujton.  D.  C,  Septembers,  1898. 
Hon.  C.  H.  Duell, 

Cotnmissioiar  of  Fatent.'<.  InUrior  Departiiwnt. 
Sir:  I  have  the  honor  to  acknowledge  the  receipt  of  your  let- 
ter of  current  date,  submitting  three  forms  which  are  used  by 
your  Office  and  asking  in  regard  to  their  liability  to  the  internal 
revenue  tax  under  Schedule  A  of  tlie  War  Revenue  Act  of  June 
13,  1898. 

These  forms  are  as  follows: 

Exhibit  "  A  "  is  a  certificate  of  registration  of  trade  mark.  Exhibit  "  B  "  is  a  certifi- 
cate that  there  has  been  deposited  in  yo»ir  Office  for  registration  a  print;  and  Exhibit 
"C"  is  a  certificate  that  there  has  been  deposited  in  your  Office  for  registration  a 
label. 

These  certificates  are  all  rociuired  by  law  and  are  given  for 
private  use.  In  conformity  with  the  opinion  of  the  Attorney- 
General  and  the  rulings  of  this  Offiee,  each  of  tliese  certifieates 
required  a  ten-cent  stamp. 

Verj'  respectfully,  W.  B.  Scott, 

Comiiiifsionrr. 

The  Commissioner  of  Internal  KeveiHU^  has  also  ruled  that  a 


264  RKVENUE   STAMPS. 

certificate  of  acknowledgement  accompanying  an  assignment,  in 
accordance  with  section  4898  of  the  Revised  Statutes  as  amended 
March  3,  1897,  re(iuires  a  revenue  stamp  to  the  vahie  of  ten 
cents  to  be  affixed  thereto. 

C.   H.    DUELL, 

Commissioner. 

Department  of  the  Interior, 

United  States  Patent  Office, 
Washington,  D.  C,  June  15,  1899. 

By  an  act  of  ('ongress  approved  June  13,  1898,  entitled  "  An 
Act  to  provide  ways  and  means  to  meet  war  expenditures  and 
for  other  purposes,"  certain  certificates  are  required  to  have 
affixed  thereto  a  revenue  stamp  to  the  value  of  ten  cents.  The 
Comnjissioner  of  Internal  Revenue,  in  view  of  certain  decisions 
of  the  Attorney-General  of  the  United  States,  has  decided  that 
certificates  of  registration  of  trade  marks,  prints  and  labels,  and 
such  certificates  as  are  issued  by  this  Office  certifying  to  copies 
of  the  records,  come  under  the  provisions  of  said  act,  and  as 
they  are  for  the  benefit  of  the  person  to  whom  they  are  issued, 
a  proper  revenue  stamp  must  be  furnished  by  said  person  to  be 
affixed  to  said  certificate. 

To  save  annoyance  to  this  Office  and  delay  in  delivering  the 
certified  copies  of  records  and  certificates  of  registration  of  trade 
marks,  prints  and  labels,  it  is  requested  that  the  order  for  certi- 
fied copies  of  the  records  be  accompanied  by  a  ten-cent  revenue 
stamp  for  each  certificate  to  be  issued,  and  that  upon  receipt  of 
notice  that  an  application  for  the  registration  of  a  trade  mark, 
print  or  label  has  been  allowed,  a  ten-cent  revenue  stamp  be 
promptly  forwarded  to  this  Office. 

As  this  Office  does  not  deal  in  revenue  stamps  or  keep  ac- 
co\mts  with  the  public  for  such  purpose,  a  stamp  must  be  fur- 
nished by  the  interested  party.  The  Office  will  not  purchase 
stamps  out  of  cash  forwarded  by  or  on  deposit  to  the  credit  of 
said  party.  Attention  is  also  called  to  the  fact  that  postage 
stamps  will  not  be  accepted  in  lieu  of  revenue  stamps. 

By  direction  of  the  Commissioner. 


STATUTES,   CONSTRUCTION    OK.  266 

Amending  regulations  as  to  cancellation  of  documentary  and  pro- 
prietary stamps. 
[Circnlar  No.  J 42— Int.  Rev..  No.  o^O.] 
Treasury  Department, 
Office  of  Commissioner  of  Internal  Revenue, 

Washington,  D.  C,  December  1,  1899. 
To  Collectors  of  Internal  Revenue  and  others  : 

Existing  regulations  providing  for  the  cancellation  of  adhesive 
revenue  stamps  by  writing  or  stamping  thereon,  with  ink,  the 
initials  of  the  name  and  the  date  when  attached,  or  by  cutting 
and  canceling  said  stamp  with  a  machine  or  punch  which  will 
affix  the  initials  and  date  as  aforesaid,  and  the  cancellation  of 
imprinted  stamps  on  checks,  drafts  or  other  instruments  by  fill- 
ing out  tlu-  dates  and  blank  lines  on  said  instruments  in  the 
usual  manner  of  drawing  checks  and  drafts,  or  by  perforating 
through  the  stamp  and  paper  to  which  it  is  attached  the  amount 
in  figures  for  which  said  instrument  Avas  drawn,  having  proved 
inadequate  to  prevent  frauds  on  the  revenue  which  have  been, 
and  now  are,  extensively  practiced,  said  regulations  are  hereby 
amended  by  adding  thereto  the  following  provision  and  require- 
ment: 

In  all  cases  where  a  documentary  stamp  of  the  denomination  of  10  cents  or  any  larger 
denomination  shall  be  ased  for  denoting  any  tax  imposed  by  the  act  of  June  13,  1898, 
the  person  using  or  affixing  the  same  shall,  in  addition  to  writing  or  stamping  thereon, 
with  ink,  the  initials  of  his  name  and  the  date  when  affixed,  mutilate  said  stamp  by 
cutting  three  parallel  incisions  lengthwise  through  the  stamp,  beginning  not  more  than 
one-fourth  of  an  inch  from  one  end  thereof,  and  extending  to  within  one-fourth  of  an 
Inch  of  the  other  end. 

Where  such  stamp  is  canceled  by  cutting  or  perforating  in  any  manner  authorized  by 
existing  regulations,  as  aforesaid,  the  mutilations  herein  provided  will  not  be  required. 

This  provision  shall  take  eflfect  and  be  in  force  on  and  after  December  15,  1899. 

G.  W.  Wilson, 
Approved :  Commissioner. 

L.  J.  Gage, 

Secretary. 

Statutes,  Construction  of. 

§  861  of  the  Revised  Statutes  provides  that  the  "  mode  of 
proof  in  the  trial  of  actions  at  common  law  shall  be  by  oral 
testimony  and  examination  of  witnesses  in  open  court,"  and 
while  under  a  state  law  the  mode  of  proof  may  be  by  interroga- 
tories addressed  to  the.opposite  party,  such  mode  cannot  be  jus- 


266  SUITS. 

tified  under  §  914  of  the  Revised  k^tatutes,  which  provides  that 
the  "practice,  pleadings  and  forms  and  modes  of  proceeding  in 
civil  causes,  in  the  Circuit  Courts,  shall  conform,  as  near  as  maj^ 
he,  to  the  practice,  pleadings  and  forms  and  modes  of  proceeding 
existing  at  the  time  in  like  causes  in  the  courts  of  record  of  the 
state  within  which  such  Circuit  Courts  are  held,"  for,  as  stated  by 
the  Supreme  Court  in  ex  parte  Fisk,  113  U.  S.  713,  5  Sup.  Ct. 
724,  "  if  Congress  has  legislated  upon  this  subject  and  prescribed 
a  definite  rule  for  the  government  of  its  courts,  it  is  to  that  ex- 
tent exclusive  of  any  legislation  of  the  states  in  the  same  mat- 
ter."    (C.  C.  A.,  IstCir.     Apr.  12,  1899.) 

Lowell.  J.]     *  Nat' 1  Cash  Register  Co.  r.  Leland  ei  al.     Same 
r.  Wright  et  al.,  94  Fed.  Rep.  502. 

Suits. 


1. 

Attorneys. 

II. 

Costs. 

[II. 

Laches. 

IV. 

Parties. 

V. 

Title. 

I.  Attorneys. 

Where  a  motion  is  made  by  complainants  lor  a  direction  by 
the  court  to  the  former  solicitors  of  said  complainants  to  cancel 
and  withdraAv  from  the  retainer  of  other  defendants  in  later 
suits,  and  forbidding  them  during  the  prosecution  of  such  later 
suits  to  accept  any  other  retainer  from  such  defendants  the 
motion  njust  be  denied,  for  the  reason  that  the  acceptance  of 
the  later  retainer  was  in  the  full  belief  that  the  former  litiga- 
tions had  terminated,  and  the  whole  matter  may  be  left  to  the 
solicitors  themselves.  The  honorable  obligation  of  a  reputable 
member  of  the  bar  is  a  better  assurance  that  professional  secrets 
will  be  respected  than  would  be  an  order  of  the  court.  (C.  C. 
A.,  7th  Cir.     Apr.  11,  1899.) 

Woods,  J.]  *Lalance  &  Grosjean  Mfg.  Co.  et  al.  v.  Haberman 
Mfg.  Co.  Same  v.  Matthai  et  al,  93  Fed. 
Rep.  197. 

II.  Costs. 

Where  the  larger  part  of  the  record  on  botli  sides  in  a  patent 


siuT!«.  267 

suit  is  -wholly  useless,  ajid  ovorloaded  witli  matter,  mainly  the 
the  testimony  of  exjterts  ahoiinding  in  repetition  and  irksome 
and  prolix  disquisitions  wholly  irrelevant  and  immaterial. 
Held,  that  a  successful  defendant  should  be  denied  costs  in  the 
proportion  -which  such  testimony  hears  to  the  whole  amount  of 
evidence  in  the  record. 

CoxE,  J.]     *  Edison   Electric  Light  Co.    r.  E.  (4.    Hernard  Co. 
rt  al.,  91  Fed.  Rep.  694. 

III.   Laches. 

1.  Where  the  OAvners  of  a  jiatent  have  been  reasonably  dili- 
gent in  prosecuting  other  infringers,  and  sustaining  the  validity 
of  the  patent  upon  two  successive  appeals  to  the  circuit  court  of 
appeals,  they  cannot  be  held  to  have  been  guilty  of  laches  in 
not  sooner  proceeding  against  other  infringers,  such  as  would 
defeat  them  in  such  suits.  (C.  C,  S.  D.  N.  Y.  Feb.  26, 
1898.) 

Lacombe,  J.]     *  New  York  Filter  Mfg.  Co.  r.  Loomis-Manning 
Filter  C(..,  91  Fed.  Rep.  42L 

2.  Where  the  owners  of  a  patent  -warned  a  prospective  in- 
fringer of  their  claim  to  a  monopoly,  and  cautioned  him  against 
infringement,  and  prior  to  this  warning  suits  had  been  instituted 
against  another  infringer,  and  the  patent  sustained  both  by  the 
trial  court  and  the  court  of  appeals,  of  which  suits  and  its 
results  the  })rospective  infringer  was  notified,  and  the  owners 
instituted  and  prosecutc^l  successfully  other  suits  against  other 
infringers  and  from  time  to  time  notified  the  prospective 
infringer  who  in  the  mean  time  had  become  an  active  infringer, 
of  each  recurring  favorable  adjudication,  until  they  finally 
reached  his  case,  some  five  years  later,  these  facts  present  no 
case  for  the  application  of  the  doctrine  of  laches,  for  he  had  ex- 
pended no  money,  incurred  no  obligations  or  clianged  no 
situation  in  reliance  upcjn  the  owners'  acquiescence.  (C.  C, 
E.  D.  Mo.,  E.  1).     Dec.  27,  1898.) 

Adams,  J.]     *New   York    Filter  Mfg.   Co.  /-.  .lackson,  91    Fed. 
Rep.  422. 

3.  Failure  to  prosecute  to  final  judgnient  a  suit  against  an 
insolvent  infringer,   who  has  disapjieared,   does  not  constitute 


268  SUITS. 

such  laches  as  to  disentitle  a  patentee  or  patent  owner  to  recover 
for  other  and  later  infringements  by  diiJerent  parties.  (C.  C, 
S.  D.  N.  Y.     Jan.  23,  1899.) 

Lacombe,  .J.]     *  Huntington  Dry-Pulverizer  Co.  et  al.  v.  Newell 
Universal  Mill  Co.  etal.,  91  Fed.  Rep.  661. 

4.  The  failure  of  the  owner  of  a  patent  at  any  time  during  a 
period  of  fourteen  years  to  take  steps  to  enforce  his  rights  under 
the  patent,  during  which  period  he  had  been  cognizant  of  the 
extensive  and  increasing  manufacture  of  alleged  infringing 
machines,  constitutes  such  laches  as  will  preclude  him  from 
maintaining  a  suit  for  the  infringement  of  such  patent.  (C.  C. 
A.,  2dCir.     Apr.  4,  1899.) 

Shipman,  J.]     *  Richardson  c.  D.  M.  Osborne  &  Co.  etal.,  93 
Fed.  Rep.  828. 

5.  Equity  is  indisposed  to  assist  parties  who  have  slept  upon 
their  rights,  and  acquiesced  in  their  appropriation  by  others  for 
a  great  length  of  time.  (C.  C,  S.  D.  N.  Y.  May  23,  1899.) 
Wallace,  J.]     *T.a  Republique  Francaise  e^  a?.  ?'.  Schultz,  94 

Fed.  Rep.  500. 

6.  Where  a  patent  owner  delays  bringing  suit  for  an  alleged 
infringement,  for  a  period  of  10  years  after  knowledge  of  such 
infringement  and  correspondence  with  the  alleged  infringer,  who 
contended  in  evident  good  faith  for  such  a  construction  of  the 
patent  as  would  avoid  infringement,  Held,  that  such  laches  are 
such  as  to  debar  not  merely  a  claim  for  profits,  but  any  claim 
to  interposition  by  a  court  of  equity.  (C.  C,  D.  Mass.  July 
29,  1899.) 

Brow^n,  J.]     *Starrett  v.  J.  Stevens  Arms  &  Tool  Co.     Same 
w.  Athol  Mach.  Co.,  96  Fed.  Rep.  244. 

7.  Where  the  complainant  knew  that  the  defendant  had  been 
manufacturing  the  alleged  infringing  device  for  14  years  before 
he  brought  suit,  Held,  such  laches  are  a  bar  to  a  decree  for  an 
accounting.     (C!.  C,  S.  D.  N.  Y.     Aug.  9,  1899.) 
TowNSEND,   J.]     *  Covert  v.   Travers  Bros.  Co.,  96  Fed.    Rep. 

568. 

IV.   Parties. 

1.   The  complainant  may  properly  maintain  a  suit  on  a  pat- 


SUITS.  2G9 

ent,  if  he  owned  it  when  the  suit  was  commenced  and  continues 
to  own  it.     (C.  C,  S.  D.  N.  Y.     Nov.  15,  1898.) 
CoxE,  J.]     *Gormiilley  &  JefTery  Mfg.  Co.   v.   Stanley  Cycle 
:\Ifg.  Co.  et  ciL,  90  Fed.  Rep.  279. 

2.  The  rule  that  a  mere  W(nkman  or  servant  who  makes,  uses 
or  vends  for  another,  and  under  that  other's  immediate  super- 
vision, a  patented  article,  is  not  liable  in  an  action  for  damages 
which  may  have  been  sustained  by  the  patentee  by  reason 
thereof,  is  an  exception  to  the  general  principle  of  law  which 
makes  all  who  participate  in  a  tort  of  misfeasance,  principals, 
and  liable  in  damages  therefor,  and  should  not  be  so  extended 
as  to  exempt  from  liability  the  general  manager  of  a  business 
which  infringes  the  exclusive  right  of  a  patentee  to  make,  use 
and  vend  the  invention  protected  by  bis  patent.  (C.  C.  A.,  9th 
Cir.     Oct.  24,  1897.) 

De  Haven,  J.]     *  Graham  >\  Karll,  S'2  Fed.  Kep.  787;  92  Fed. 
Rep.  155. 

3.  Where  the  manufacturers  of  an  infringing  article  assumed 
the  defense  in  a  suit  against  the  dealers  in  said  article,  without 
becoming  technical  parties  thereto,  and  the  resulting  injunction 
ran  against  the  dealers,  their  ofhcers,  trustees,  etc.  and  "manu- 
facturers," Hehl,  that  the  "manufacturers"  were  included  in 
the  writ,  not  as  agents  and  manufacturers  of  everybody  with 
whom  they  might  do  business,  but  as  agents  and  manufacturers 
of  the  defendant  dealers,  and  sales  of  the  infringing  article  to 
other  dealers  having  no  connection  Avith  or  relation  to  the  de- 
fendant dealers,  do  not  bring  the  manufacturers  within  the  pro- 
hibition of  the  writ.  They  are  therefore  not  in  contempt  for 
continuing  their  sales  to  such  other  dealers.  (C.  C,  S.  D.  N. 
Y.     Feb.  24.  1899.) 

Wheelek,  J.]     *IJ.  S.  Playing  Card  Co.  r.  Spalding  et  al,  92 
Fed.  Rep.  368. 

4.  Tlie  execution  of  an  assignment  and  a  release  by  one  of 
the  joint  owners  of  a  patent  of  his  right  to  damages  from  an  in- 
fringer of  the  patent  does  not  destroy  the  co-owner's  right  to 
recover  his  damages  from  such  infringer.  (C.  C,  S.  D.  N.  Y. 
Mar.  25,  1899.) 

Lacombe,  J.]  *Lalance  &  Grosjean  Mfg.  Co.  et  al.  v.  Haber- 
m an  .Mfg.  Co.  Same  v.  Matthai  et  nl,  93 
Fed.  Rep.  197. 


270  SUITS. 

5.  Where  there  seems  to  be  no  necessity  for  it,  the  court  will 
not  undertake  at  an  early  stage  of  the  case  by  an  order  to  make 
a  party  complainant,  whose  interest  may  be  with  the  defend- 
ants, a  defendant,  but  at  final  hearing  will  arrange  the  ])arties 
and  administer  relief  as  their  respective  rights  may  require. 
But  should  the  co-complainant  undertake  to  delay,  harass  or 
impede  the  orderly  progress  of  the  cause,  the  motion  to  make 
such  co-complainant  a  party  defendant  may  be  renewed.    */«'/. 

6.  In  an  infringement  suit  brought  against  a  corporation  and 
several  individual  defendants,  it  is  not  necessary  to  limit  the 
decree  to  the  joint  infringement  of  all  the  defendants,  but  each 
individual  defendant  may  be  required  to  account  for  his  several 
infringements.      (G.  C.  A.,  1st  Cir.     Apr.  25,  1899.) 

Colt,  J.]  *8imonds  Rolling  Machine  C!o.  r.  Hathorn  Mfg.  Co. 
et  al.  Hathorn  Mfg.  Co.  et  al.  i\  Simonds  Roll- 
Machine  Co.,  93  Fed.  Rep.  958. 

7.  The  i)atentees,  by  contract  in  writing,  granted  to  complain- 
ant the  exclusive  right  to  manufacture  and  sell  throughout  the 
United  States  articles  made  undei-  their  patent.  As  this  writing 
did  not  by  its  terms  convey  the  exclusive  right  to  use  the  pat- 
ented invention,  it  did  not  amount  to  a  transfer  of  the  title  of 
the  patent,  and  must  therefore  be  classified  as  a  license,  leaving 
the  holder  of  the  title  a  necessary  party  to  any  suit  for  infringe- 
ment of  the  patent  for  technical  reasons,  although  in  every  case 
of  infringement  by  an  unauthorized  manufacture  or  sale  of  the 
patented  article  the  complainant  alone  would,  in  equity,  be  en- 
titled to  all  damages  recovered,  and  if  the  owner  of  the  patent 
refused  to  jom  the  complainant  in  a  suit  ag-ainst  infringers  he 
might  be  brought  into  the  suit  by  being  joined  as  defendant. 
(C.  C,  D.  Minn.     Feb.  1,  1899.)" 

LocHREN,  .J.]     'i^Owatonna  Mfg.  Co.  v.  F.  B.  Fargo  &  Co.,  94 
Fed.  Rep.  519. 

8.  In  a  suit  in  equity,  where  the  complainant  has  all  the  sub- 
stantial right  to  the  relief  and  to  the  recovery,  if  he  omits  to 
join  a  technically  necessary,  though  really  formal,  party,  he  will 
be  allowed  to  bring  such  party  in  by  amendment;  and  where 
the  complainant  actually  acquired  the  technical  title  to  a  jDatent 
just  after  the  suit  was  begun,  he  was  properly  allowed  to  allege 


TESTIMONY    OK    KXPKHTS.  271 

that  fact  by  supplemental  bill.  There  was  no  longer  any  reason 
to  make  the  prior  holder  of  the  title  to  the  patent  a  party,  as 
even  in  respect  to  the  past  infringements  alleged,  the  e(iuitable 
and  substantial  right  (^f  recovery  was  in  the  complainant  alone. 

9.  The  specilic  averment  as  to  parties  composing  a  firm  or 
partnership  named  as  complainant  discloses  the  real  parties  in 
interest  and  informs  the  respondents  of  the  names  of  their 
adversaries.  Thes3  are  the  parties  to  whom  the  court  will 
resort  if  necessary,  to  compel  obedience  of  orders  and  to  enforce 
the  payment  of  any  costs  awarded  in  favor  of  the  respondents. 
(C.  C.^  N.  D.  Cal."   May  22,  1899.) 

Morrow,  .!.]     *  Fruit  Cleaning  Co.    v.   Fresno  Home- Packing 
Co.  et  nl,  94  Fed.  Rep.  845. 

V.  Title. 

If  a  party  improvidently  or  mistakenly  institutes  a  suit  and 
claims  that  his  title  is  of  a  certain  character,  he  is  not  thereby 
precluded  in  another  suit  against  other  parties  from  claiming 
his  true  title,  nor  if  in  the  latter  case  he  should  prove  the  claim 
to  be  true  is  he  precluded  from  securing  a  judgment  the  reverse 
of  what  he  may  have  recovered  in  the  former  suit.  (C.  C,  D. 
Ind.  Feb.  10,"  1899. ) 
Baker,  -T.]     *  Centaur  Co.  v.  Robinson,  91  Fed.  Rep.  889. 

Testimony  of  Experts. 

1.  The  court  is  not  bound  to  accept  the  testimony  of  expert 
witnesses  as  conclusive,  for  it  has  the  unquestioned  right  to 
draw  its  own  conclusions  from  an  exhibition  and  inspection  of 
the  machines  in  controversy  or  models  thereof  as  well  as  from 
the  opinions  of  such  expert  witnesses.  It  considers  the  facts 
upon  which  the  opinions  of  the  witnesses  are  based  and  de- 
termines from  all  the  evidence  in  the  case  whether  the  con- 
clusions given  by  the  witnesses  are  sound  and  substantial. 
(C.  C.  A.,  9th  Cir.     Feb.  13,  1899.) 

Hawley,  J.]  *  Overweight  Counterbalance  Elevator  Co.  v. 
Improved  Order  of  Red  INIen's  Hall  Ass'n 
of  San  Francisco,  94  Fed.  Rep.  155. 

2.  More  weight  is  given  to  the  testimony  of  a  witness  based 


272  TRADE   MARKS   AND   TRADE    NAMES. 

upon  facts  within  his  own  knowledge  and  experience,  than  to 
the  testimony  of  a  witness  which  is  largely  the  assertion  of 
theory.  */d. 

3.  The  rule,  that  the  trial  court  not  only  has  the  power  but 
it  is  its  duty,  where  the  evidence  is  insufficient  to  support  a 
verdict  for  the  plaintiff,  to  instruct  the  jury  to  find  a  verdict  for 
the  defendant,  is  applicable  to  patent  as  well  as  other  cases, 
and  it  is  as  applicable  to  the  question  of  infringement  as  to  any 
other  material  or  controlling  question  involved  in  the  case.  */d 

4.  An  expert  witness  may  describe  the  results  of  the  omission 
of  certain  elements  of  a  device,  but  he  may  not  be  permitted  to 
call  such  an  omission  a  ' '  fatal  fault, ' '  for  the  word  fatal  con- 
tains an  inference  that  goes  beyond  the  province  of  an  expert. 
(C.  C.  A.,  IstCir.     Apr.  12,  1899.) 

Lowell,  J.]     *Nat'l  Cash  Register  Co.  r.  Leland  6i  a^.     Same 
r.  Wright  et  al,  94  Fed.  Rep.  502. 

Trade  Marks  and  Trade  Names. 

I.   In  General. 
II.  Abandonment. 

III.  Alternatives. 

IV.  Anticipation. 
V.   Arbitrary. 

VI.   Arbitrary  Descriptive. 
VII.   Assignment. 
VIII.  Descriptive. 
IX.  Essential  Features. 
X.   Foreign  Words. 
XI.  Generic  Terms. 
XII.  Geographical  Names. 
(a)  Indicating  Locality. 
(6)    Used  Arbitrarily  or  Fancifully. 

XIII.  Infringement. 
(a)  In  General. 

(6)  Particular  Cases. 

XIV.  In.tunction. 


TRADK    MARKS    AND    TRADE    NAMES.  273 

XV.    InTE  I!  FE  H  ENCE. 

XVI.  Jurisdiction  of  Courts. 
XVII.   Practice  in  the  Patent  Office. 
XVIII.  Registration. 

XIX.    Right  to  use  Name  of  Patented  Article. 
XX.   Right  to  Use  Personal  Name. 

XXI.  Statute  ('onstrued. 
XXII.  Unfair  Competition. 

XXIII.  Use  and  Sale  as  Establishing  Title. 

XXIV.  What  Does  Not  Constitute. 

I.  In  General. 

1.  Where  T  was  the  OAvner  and  originator  of  a  trade-mark 
which  he  used  upon  the  entire  product  of  his  factory  in  Eng- 
land, stamped  it  in  England  upon  all  goods  which  he  sold  to  T. 
L.  &  Co.,  a  firm  of  which  he  was  a  partner,  and  subsequently 
permitted  the  firm  to  use  it  upon  the  product  of  their  factory  at 
Bridgeport,  Conn.,  U.  S.  A.,  Held,  chat  this  licensed  use  in  the 
business  of  a  firm  of  a  trade-mark  owned  by  one  partner  does 
not  place  the  trade-mark  in  the  firm  as  a  part  of  its  assets.  T's 
permission  or  allowance  to  the  firm  to  use  his  trade-mark  did 
not  make  it  partnership  property.  (C.  C.  A.,  2d  Cir.  Apr.  4, 
1899. ) 

Shipman,  J.]     *BatcheIlerv.  Thomson  (2  cases). 

Thomson  v.  Batcheller,  92  Fed.  Rep.  G60. 

2.  Upon  the  dissolution  of  the  partnership  and  the  transfer 
by  T  of  his  interest  in  the  factory  property,  he  could  rightfully 
continue  in  the  purchaser  the  right  to  use  the  trade-mark  which 
he  had  previously  permitted  the  firm  to  use  in  their  factory. 
The  ownership  and  right  to  a  general  use  remained  in  T,  the 
limited  right  to  use  for  a  limited  period  being  continued  in  the 
purchaser  individually.  '  */(/. 

3.  Where  T  had  been  continuousl}'  and  still  Avas  the  owner  of 
the  trade-mark  and  also  an  extensive  manufacturer  of  the  goods 
to  which  It  Avas  affixed,  Held,  that  the  relinquishment  of  a  li- 
cense Avhich  he  had  granted  to  another  Avas  not  void,  on  the 
ground  that  the  trade-mark,  as  distinct  property  separate  from 


274  TRADE    MARKS    AND    TRADE    NAMES.      " 

the  article  created  by  the  original  manufacturer,  is  not  the  sub- 
ject of  sale,  as  it  was  merely  the  relinquishment  to  the  owner  of 
the  right  to  use  his  own  proi3erty.  */r/. 

4.  The  function  of  a  trade-mark  is  to  indicate  to  the  public 
the  origin,  manufacture  or  ownership  of  articles  to  which  it  is 
applied,  and  thereby  secure  to  its  owner  all  the  benefit  resulting 
from  his  identification  by  the  pul)lic  with  articles  bearing  it. 
No  other  person  than  the  owner  of  a  trade-mark  has  a  right, 
without  the  consent  of  such  owner,  to  use  the  same  on  like  arti- 
cles, because  by  so  doing  he  would  in  substance  falsely  repre- 
sent to  the  public  that  his  goods  were  of  the  manufacture  or  se- 
lection of  the  owner  of  the  trade-mark,  and  thereby  would  or 
might  deprive  the  latter  of  the  profit  he  otherwise  might  make 
by  the  sale  of  the  goods  which  the  purchaser  intended  to  buy. 
Where  a  trade-mark  is  infringed  the  essence  of  the  wrong  con- 
sists in  the  sale  of  the  goods  of  one  manufacturer  or  vendor  as 
those  of  another,  and  that  is  the  ground  upon  which  a  court  of 
equit}''  protects  trade-marks.  It  is  not  necessary  that  a  trade- 
mark should  on  its  face  show  the  origin,  manufacture  or  owner- 
ship of  the  article  to  which  it  is  applied;  it  is  sufficient  that  by 
association  with  such  articles  in  trade  it  has  acquired  with  the 
public  an  understood  reference  to  such  origin,  manufacture  or 
ownership.      (C.  C,  D.  Del.     May  5,  1899.) 

Bradford,  J.]     *Dennison  Mfg.  Co.  v.  Thomas  Mfg.  Co.,  94 
Fed.  Rep.  651. 

5.  A  trade-mark  may  consist  of  a  name,  mark,  form,  brand, 
device  or  symbol,  although  well-known,  but  not  jjreviously  used 
in  connection  with  the  same  article;  and  subject  to  certain- 
qualifications,  it  may  consist  of  letters  or  figures.  No  one  has 
a  right  to  the  exclusive  use  of  any  words,  letters,  figures  or  sym- 
bols, which  have  no  relation  to  the  origin  or  ownership  of  the 
articles  to  which  they  are  applied,  but  only  indicate  their  names 
or  quality.  ^Id. 

6.  Nothing  can  be  legally  appropriated  by  any  one  as  a  trade 
mark  which,  aside  from  superiority  in  excellence,  popularity  or 
cheapness  of  the  articles  bearing  it,  would  practically  confer 
upon  him  a  monopoly  in  the  j)roduction  or  sale  of  like  articles. 

7.  A  trade  mark  is  designed  to  enable  one  to  legitimately 


TRADE    MARKS    AND    TRADE    NAMES.  275 

build  up  or  protect  lii.s  business,  but  not  to  deprive  others  of  tlie 
right  to  use  necessary  or  proper  means  for  carrying  on  an  hon- 
orable competition  in  trade.  */(/. 

8.  No  one  has  the  right  to  appropriate  a  sign  or  a  symbol 
which,  from  the  nature  of  the  fact  it  is  used  to  signify,  others 
may  employ  Avith  equal  truth,  and  therefore  have  an  ecjual  right 
to  employ  for  the  same  ])urpose.  Hence,  no  one  can  acquire  an 
exclusive  right  to  the  use,  as  a  trade  mark,  of  a  generic  name 
or  word  which  is  merely  dcscrijitive  of  an  article  or  a  sign, 
symbol,  figure,  letter,  brand,  form  or  device,  which  either  on  its 
face  or  by  association,  indicates  or  denotes  merely  grade,  (juality, 
class,  shape,  style,  size,  ingredients  or  composition  of  an  article, 
or  a  word  or  words  in  common  use  designating  locality,  section 
or  region  of  country.  *Id. 

9.  The  word  ''quality"  is  used  in  different  senses  in  the 
different  cases.  It  is  employed  in  some  to  denote  grade,  in- 
gredients or  properties  of  an  article,  and  in  others  to  indicate 
generally  the  merit  or  excellence  of  an  article  as  associated  with 
or  coming  from  a  certain  source.  ^\'hile  there  can  be  no  valid 
trade-mark  as  denoting  quality  when  used  merely  in  the  former 
sense,  there  may  be  a  valid  trade-mark  as  indicating  quality 
when  used  in  the  latter  sense.  */d. 

II.  Abandonment. 

1.  In  view  of  the  continued  and  increasing  appropriation  by 
competitors  of  his  label  and  of  his  trade  name  (as  a  general 
designation)  a  comj^lainant  who  has  for  nine  years  done  nothing 
toAvards  maintaining  or  even  asserting  his  original  rights  cannot 
be  heard  to  sup})ress  the  competition  which  his  supineness  has 
has  allowed,  and  even  invited  and  encouraged  to  grow  up.  The 
delay  or  acquiescence  has  continued  so  long  and  under  such  cir- 
cumstances as  to  defeat  the  right  itself.  (C.  C.  A.,  2d  Cir. 
Jan.  5,  1899.) 

Lacombe,  .J.]  'i'^Saxlehner  r.  Eisner  &  Mendelsohn  Co.  Same 
r.  Siegel  Cooper  Co.  Same  v.  Gies,  Same 
V.  Marquet,  91  Fed.  Rep.  537. 

2.  The  provisions  of  a  treaty  with  a  foreign  country  are  not 
to  be  construed  as  to  hold  that  when  the  pul)lic  in  this  country 
has  acquired  through  the  owner's  laches  the  right  to  use  a  trade 


276  TRADE    MARKS    AND    TRADE    NAMES. 

name  and  a  trade-mark,  such  right  is  abrogated  wlienever,  by 
the  operation  of  some  sulisequent  law  of  such  foreign  country, 
the  trade  name  and  trade-mark  is  secured  to  him  in  such  foreign 
country.  (C.  C.  A.,  2d  Cir.  Jan.  25,  1899.  On  motion  for 
re-argument.)  ^Id. 

III.  Alternatives. 

1.  It  is  well  settled  that  a  picture  and  a  word  cannot  be 
covered  by  one  registration  unless  they  are  true  alternatives. 
(Mar.  30,  1899.) 

Duell,  J.]     Ex  parte  Muir,  87  0.  G.  357. 

2.  The  representation  of  a  rose  and  the  words  "American 
Beauty  ' '  are  not  true  alternatives  and  cannot  be  registered  as  one 
trade-mark.  Id. 

IV.  Anticipation. 

1.  The  word  "  Dyspepticide  "  refused  registration  as  at  rade- 
mark  for  certain  named  medicinal  preparations  as  it  is  antici- 
pated by  the  registered  mark  ' '  Dyspepticure ' '  for  the  same 
class  of  goods.     (Apr.  29,  1899.) 

Duell,  C]     Ex  parte  Foley  &  Co.,  87  0.  G.  1957. 

2.  The  differences  either  to  the  eye  or  ear  are  no  greater  between 
"dyspepticure"  and  "dyspepticide"  than  between  "saponite" 
and  "sapolio,"  or  between  "cellonite"  and  "celluloid,"  or 
between  "wamyesta"  and  "wamsutta,"  or  between  "  maiz- 
harina"  and  "maizena. "  Between  such  words  the  courts  have 
found  "  infringing  resemblances. "  Id. 

3.  Where  it  was  contended  that  as  the  endings  of  "  dyspepti- 
cure" and  "dyspepticide"  are  distinctly  different  and  have 
different  meanings  and  therefore  the  mark  of  the  application 
should  be  registered,  Held,  that  in  order  to  correctly  decide 
whether  or  not  an  alleged  trade-mark  is  likely  to  cause  confusion 
or  mistake  because  of  its  resemblance  to  a  registered  lawful 
mark,  the  marks  must  be  taken  as  a  whole.  In  the  case  of  a 
word  the  ordinary  purchaser  is  not  expected  to  analyze  it  and 
resolve  it  into  its  component  parts.  It  is  only  required  that  the 
purchaser  should  consider  the  word  as  an  entirety.  Id. 

V.  Arbitrary. 

Where  the  examiner  refused  to  register  the  word  "  Otaka  "  as 


TRADE    MARKS    AND    TKADK    NAMES.  277 

a  tnide-niark  for  Msciiits  on  tlio  urouiul  that  it  so  iicarl>-  ri'&cni- 
bled  the  mark  "  Uneeda  "  ah-eady  registered  as  to  he  Hkely  to 
cause  confusion  in  the  mind  of  the  public,  Held,  that  the  dif- 
ferences between  the  appearance  and  sound  of  the  two  words  are 
marked,  as  is  also  the  idea  conveyed  by  them,  and  tliat  the 
word  should  be  registered.  (Oct.  23,  1899.) 
DuELL,  C]     Ex  parte  Lorenz,  89  0.  G.  2067. 

YI.  Arbitrary,  Descriptive. 

1.  Ap})licant  having  filed  an  affidavit  that  the  wonis  "  Royal 
Blue"  are  not  descriptive  of  the  general  color  of  the  carpet- 
sweeper  in  connection  with  which  the  words  are  used.  Held, 
that  these  words  when  so  applied  to  carpet-sweepers  as  not  to 
be  indicative  of  the  color  of  the  sweepers  cannot  be  refused 
registration,  as  they  liave  an  arbitrary  suggestive  meaning. 
(May  12,  1899.) 

DuELL,  C]      Ex  parte  Grand   Rapids  School  Furniture  Com- 
pany, 87  0.  G.  1957. 

2.  The  general  principle  upon  which  registration  has  been 
refused  by  this  Office  for  words  used  deceptively  is,  that  a 
fraud  is  practiced  upon  the  public.  Examples  are  numerous — 
"  Tamarac  Balsam"  for  a  medical  compound  in  which  ad- 
mittedly no  tamarac  was  used;  "American  Sardines"  as  a 
mark  for  fish  of  another  kind.  The  general  rule  is  that  words 
should  not  be  registered  whenever  it  clearly  and  distinctly 
appears  that  the  proposed  trade-mark  constitutes  a  misrepre- 
sentation of  such  a  character  that  the  courts  would  not  protect. 
(Ex  parte  Bloch  &  Co. ,  40  0.  G.  443. )  Id. 

3.  Where  an  applicant  sought  to  register  as  a  trade-mark  for 
powdered  soap  "the  picture  of  a  bag  having  the  open  end 
thereof  held  closed  by  a  tie,"  Held,  that  the  mark  is  either 
descriptive  or  deceptive  and  cannot  be  registered.  (Nov.  13, 
1899.) 

Greeley,  A.  C]     Ex  parte  Martin,  87  0.  G.  2259. 

4.  The  objection  to  registering  a  descriptive  mark  is  not 
alone  on  the  ground  that  it  does  in  fact  describe  the  goods  to 
which  an  applicant  actually  attaches  it,  but  because  others  liave 
the  right  to  use  the  same  mark  to  describe  their  goods,  and 


278  TRADE    MARKS    AND    TRADE    NAMES. 

therefore  the  exclusive  right  to  the  mark  cannot  be  given  to  one 
person.  Id. 

5.  The  mark  may  not  be  descriptive  of  the  particular  goods 
sold  b}'  an  applicant;  but  at  the  same  time  it  may  be  descrip- 
tive of  similar  goods  sold  by  another  party,  and  that  other  party 
cannot  be  prevented  from  using  that  descriptive  mark  on  his 
goods.  Id. 

6.  While  letters  and  figures  arbitrarily  may  not,  and  often  do 
not,  of  themselves  indicate  shape,  size,  grade  or  quality,  yet  if 
they  be  attached  to  articles  to  distinguish  different  shapes,  sizes, 
styles,  grades  or  qualities,  they  may  become  by  association  just 
as  descriptive  as  words  expressly  defining  the  same.  (C.  C, 
D.  Del.     May  5,  1899.) 

Bradford,  J.]     *Dennison  Mfg.  Co.  v.  Thomas  Mfg.   Co.,  94 
Fed.  Rep.  657. 

VII.  Assignment. 

Every  trade-mark  is  assignable,  together  with  the  business  in 
which  it  is  used,  unless  it  is  strictly  personal,  and  if  a  trade- 
mark belongs  to  the  class  of  assignable  trade-marks,  it  is  trans- 
ferred, by  the  operation  of  the  insolvency  or  bankrupt  laws,  to 
the  assignee,  as  part  of  the  bankrupt's  assets.  (C.  C.  A.,  5th 
Cir.     Apr.  11,  1899.) 

Pardee,  J.]     *Sarrazin  v.  W.   R.  Irby  Cigar  &  Tobacco  Co., 
Lim.,  93  Fed.  Rep.  624;  88  0.  G.  387. 

VIII.  Desbriptive. 

1.  The  words  ''Bromo  Soda  Mint"  refused  registration  as  a 
trade-mark  for  remedies  for  certain  named  diseases,  as  they  are 
indicative  of  the  ingredients  and  characteristics  of  the  prepara- 
tion to  which  they  are  applied,  as  any  one  reading  said  words 
would  gather  that  soda-mint,  an  article  Avell-known  to  phar- 
macists, is  combined  with  bromin  or  a  bromid.  (Nov,  26, 
1898.) 

DuELL,  C]     Ex 'parte  Spayd,  86  0.  G.  631. 

2.  The  phrase  "Apple  and  Honey"  is  descriptive.  It  may 
not  be  entirely  descriptive,  but  it  is  sufficiently  so  under  the  de- 
cisions of  the  Federal  courts  to  compel  me  to  refuse  registration. 
The  case  most  in  point  is  that  of  Brown  Chemical  Co.  v.  Meyer 
(55  0.  G.  287;  139  U.  S.  540,  542).     It  is  there  said: 


TRADE    MARKS    AND    TRADE    NAMES.  279 

The  genenil  proposition  is  well  estiiblished  that  words  which  are  merely  descriptive  of 
the  character,  qualities  or  composition  of  an  article,  or  of  the  place  where  it  is  manu- 
factured or  produced,  cannot  be  monopolized  as  a  tra<le-mark  (Canal  Company  v.  Clark, 
13  Wall.  311 ;  Amoskeag  Manufacturing  Company  !•.  Trainer,  17  O.  G.  1217  ;  101  U.  S.  51  ; 
Caswell  V.  Davis,  35  N.  Y.  281  ;  Thomson  v.  Winchester,  19  Pick.  214  ;  Raggett  r.  Find- 
later,  L.  R.,  17  Eq.  29);  and  we  think  the  words  "  Iron  Bitters"  are  so  far  indicative  ot 
the  ingredients,  characteristics  and  purposes  of  the  plaintilTs  preparation  as  to  fall 
within  the  scope  of  these  decisions. 

"  Iron  Bitters"  are  no  more  indicative  than  are  "  Ap])le  and 
Honey"  as  used  by  applicants.      (Mar.  4,  1899.) 
DuELL,  C]     Ex  parte  G.  F.  Heublein  &  Bro.,  87  0.  G.  179. 

3.  The  words  "Chill  Stop"  refused  registration  as  a  trade- 
mark for  chills  and  fever,  malaria,  and  intermittent  fever,  as 
they  express  a  quality  of  the  article  upon  which  they  are  used. 
(Mar.  7,  1899.) 

DuELL,  C]     Ex.  parte  Hance  Bros.  &  White,  87  0.  G.  698. 

4.  While  the  arrangement  of  the  words  "Chill  Stop"  is 
somewhat  different  from  the  ordinary  and  they  do  not  express 
qualit}'  in  the  most  grammatical  form,  they  being  catchy  and 
slangy,  they  are  nevertheless  descriptive  as  well  as  advertising. 
{Ex parte  Brigham,  20  0.  G.  891,  cited.)  Id. 

5.  The  rearrangement  of  descriptive  words  in  common  use 
cannot  clothe  them  with  attributes  not  possessed  when  not  so 
arranged.  Id. 

IX.  Essential  Features. 

1.  The  W'ords  "  Nickel  Soap  "  cannot  be  registered  as  a  trade- 
mark, as  the  word  "  Soap  "  is  merely  the  name  of  the  goods  to 
which  the  mark  is  applied  and  is  made  the  essential  feature  of 
the  mark.     (Apr.  27,  1899.) 

DuELL,  C]     Ex  parte  Butler,  87  0.  G.  1781. 

2.  The  word  "nickel"  as  applied  to  soap  does  not  indicate 
the  price  at  which  the  soap  is  sold  and  may  be  registered  as  a 
trade-mark.  Id. 

3.  Nickel  is  the  name  of  a  metal,  and  it  is  not  robbed  of  its 
primary  significance  by  the  fact  that  in  some  localities  it  has  a 
secondary  meaning  in  that  it  is  used  as  a  name  for  a  coin.  This 
subordinate  or  fanciful  meaning  does  not  bar  its  adoption  and 
use  as  a  trade-mark  for  soap.  The  words  "eagle"  and 
"crown"  have  been  held  to  be  subject  to  exclusive  appropri- 
ation as  lawful  trade-marks,  and  yet  they  have  a  subordinate  or 


280  TRADE    MAKKS    AND    TRADE    NAMES. 

secondnry  meaning  in   that   certain   coins  are  designated  and 
known  by  such  names.  Id. 

4.  Tested  by  the  definitions  given  to  tlie  term  "trade-mark" 
and  applying  the  rules  laid  down  as  guides,  it  is  Held,  that  the 
term  "Ever-Ready,"  plainly  meaning  a/uTfi/.s  ready,  as  applied 
to  a  domestic  coffee-mill  intended  for  ordinary  and  daily  house- 
hold use  is  not  a  trade-mark,  in  that  it  lacks  the  essential 
characteristics  of  individuality  and  exclusiveness.  (May  18, 
1899.) 

DuELL,  C]      Ex  parte  The  Bronson  Company,  87  0.  G.  1782, 

5.  The  facsimile  of  the  mark  presented  for  registration  dis- 
closes the  flag  of  the  United  States  crossed  cliagonall}'  by  a  band 
or  panel,  upon  which  aj^pears  the  word  "Standard,"  and  dis- 
tributed about  the  flag  are  stars,  the  whole  being  inclosed  in 
concentric  circles,  between  which  appear  the  Avords  "Standard 
Fashion  Company,  New  York."  The  essential  features  are 
recited  as  consisting  of  "  the  representation  of  a  standard  or  flag 
and  a  number  of  stars  distributed  about  the  standard  or  flag;" 
Held^  that  as  j^resented  the  mark  is  not  registrable.  (Sept.  19, 
1899.) 

DuELL,  C]      Ex2)arte  Standard  Fashion  Co.,  89  0.  G.  189. 

6.  Held,  further,  that  the  band  or  panel  diagonally  crossing 
the  flag  gives  to  it  a  distinctive  feature,  and  the  examiner  was 
justified  in  holding  it  to  be  an  essential  feature  of  applicant's 
mark.  Id. 

7.  Held,  further,  that  none  of  the  words  can  properly  be  said 
to  constitute  an  essential  feature  of  the  mark,  and  they  are  not 
so  claimed.  Id. 

8.  Held,  further,  that  the  concentric  circles  are  merely  acces- 
sories, but  but  not  essential  features,  and  to  insist  upon  their 
being  included  in  the  statement  of  essential  features  might  tend 
to  the  injury  of  applicant  and  the  benefit  of  an  infringer.    Id. 

9.  The  essential  feature  of  a  trade-mark  is  not  that  which  the 
applicant  elects  to  designate  as  such,  but  that  which  would 
strike  the  public  mind  as  its  most  salient  feature.  Id. 

X.   Foreign  Words. 

1.  The  words  "  Gold  Label,"  which  are  unregistrable  in  Eng- 


TRADE    INIARKS    AND    TRADE    NAMES.  281 

lish  characters,  do  not   become  registrable  when   pro(hic('(l   in 
Hebrew  cliaracters,  ahhouuli  there  may  be  no  words  in  the  He- 
brew language  corresponding  to  these  English  words.     (Dec.  22, 
1899.) 
DuELL,  C]     Ex  ixirte  SiuhmQY,  86  0.  G.  181. 

2.  The  fact  that  the  Enghsh  words  "Gold  Label"  are  pro- 
duced in  Hebrew  cliaracters,  which  may  be  illegible  to  the 
majority  of  English-speaking  people,  is  no  reason  why  such 
words  may  become  subject  to  ado])tion  as  a  lawful  ti'ade  mark. 

I<J. 

3.  The  word  "  Matzoon "  (or  "Madzoon")  having  been 
used  in  Armenia  for  centuries  to  designate  an  article  of  food  or 
diet  made  from  sterilized  and  fermented  milk,  cannot  be  appro- 
priated as  a  trade  mark  by  the  person  who  introduced  both  the 
name  and  the  article  into  this  country;  nor  can  the  defendants 
be  enjoined  on  the  theory  that  the  word  has  become,  in  a  si)ecial 
and  secondary  sense,  a  mark  of  tlie  origin  of  complainant's 
goods,  where  the  defenclant's  label  clearly  distinguishes  their 
own  product  from  that  of  complainant.  (C.  C,  D.  Mass. 
Dec.  1,  1898.) 

Colt,  J.]     *  Dadirrian  r.  Yacubian  et  aJ.,  90  Fed.  Rep.  812. 

XI.  Generic  Terms. 

A  term  which  can  be  truthfully  used  by  many  in  the  descrip- 
tion of  a  business  or  occupation  cannot  be  exclusively  appropri- 
ated by  any  one  of  them.  The  word  "Continental"  is  a  gen- 
eric term,  and  it  is  not  the  policy  of  the  law  to  permit  the 
exclusive  appropriation  of  words  or  terms  which  are  generic; 
that  is,  which  pertain  to  a  class  of  related  things,  and  which 
are  of  general  api^lication.  The  right  to  use  such  words  should 
remain  vested  in  the  public.  (C.  C,  N.  D.  Texas.  Oct.  10, 
1899.) 

Meek,  J.]     *  Continental  Ins.  Co.  v.  Continental  FireAss'n,  96 
Fed.  Rep.  846. 

XII.  Geographical  Names. 
(a)   Indicating  Locality. 

1.  The  name  "Bowdoin,"  V)oing  the  name  of  a  township  in 
Maine,  the  name  of  a  college  (situated  in  the  same  state),  which 


282  TRADE    MARKS    AND    TRADE    NAMES. 

was  named  after  James  Bowdoin,  is  both  geopraphical  and  a 
surname,  and  therefore  refused  registration.  The  fact  that 
"  Bowdoin  "  is  the  name  of  a  college  does  not  serve  to  make  an 
exception  of  the  word.  If  it  did,  then  "  Columbia,"  "  Cornell " 
and  names  of  other  well-known  colleges  would  be  subject  to  ex- 
clusive appropriation,  although  such  words  are  geographical  or 
surnames.      (Nov.  29,  1899.) 

DuELL,  C]      Ex  parte  Shaw,  Hammond  &:  Carney,  68  MS.  Dec. 
229. 

2.  While  the  word  "Gibraltar"  has  a  certain  arbitrary  and 
fanciful  meaning,  implying  firmness  and  strength,  yet  that  is 
secondary  to  its  geographical  meaning,  and  it  should  not  be 
registered  as  a  trade-mark.      (Feb.  23,  1899.) 

DuELL,  C]     Ex.  parte  Nave  &  McCord  Mercantile  Co.,  86  0.  G. 
1985. 

3.  The  fact  that  no  one  carries  on  the  manufacture  of  goods 
at  any  of  the  places  named  Gibraltar  should  not  be  controlling, 
as  the  applicant  by  appropriating  the  word  cannot  bar  another 
who  may  hereafter  manufacture  goods  at  Gibraltar  from  marking 
his  goods  with  that  word.  Id. 

4.  The  name  "Vichy"  is  not  a  trade-mark  or  trade-name  in 
the  strict  legal  sense  of  the  term,  but  is  a  geographical  name 
applied  by  the  various  owners  of  mineral  springs  at  or  near 
Vichy,  France,  to  designate  the  locality  of  origin,  and  indicate 
the  general  characteristics  of  the  waters.  A  suit  by  such  own- 
ers can  therefore  be  maintained  against  a  defendant  who  applies 
the  name  to  artificial  waters,  only  upon  the  theory  of  unfair 
competition.  (C.  C,  S.  D.  N.  Y.  May  23,  1899.)"^ 
Wallace,  J.]     *La  Republique  Francaise  (?^  ai.  ^\  Schultz,  94 

Fed.  Rep.  500. 

5.  It  is  not  now  a  question  that  no  one  can  acquire  an  ex- 
clusive right  to  the  use  of  geographical  names  as  trade-marks, 
as  that  question  has  been  settled  by  a  long  line  of  court  de- 
cisions.     (C.  C.  A.,  7th  Cir.     June  6,  1899.) 

Jenkins,  J.]     *  Illinois  Watch   Case  Co.  et  al.  v.  Elgin  Nat'l 
Watch  Co.,  94  Fed.  Rep.  667;  87  0.  G.  2323. 

6.  The  decision  of  the  court  below  sustaining  the  bill  upon  the 
ground  that  the  word  "Elgin"  had  acquired  a  secondary  sig- 


THADE    MARKS    AND    TRADE    NAMES.  283 

nification,  and  tliroiigli  a  long  course  of  business  had  come  as 
applied  to  watches  to  designate  the  manufacture  of  ai)pellee  as 
an  article  of  approved  excellence,  and  that  therefore  the  word 
in  that  connection  performed  distinctly  the  function  of  a  trade- 
mark, and  could  be  registered  and  upheld  as  such  under  the 
act  of  Congress,  Held,  to  be  erroneous  and  that  the  word  "El- 
gin" was  not  and  could  not  be  made  a  trade-mark.  (Elgin 
Watch  Co.  V.  Illinois  Watch  Case  Co.,  89  Fed.  Rep.  487, 
Sand.  Pat.  Dig.  1898,  145,  reversed.)  */(i. 

XII.  Geographical  Names. 

(6)    Used  Arhitrarily  or  Fandfulhj. 

1.  On  appeal  from  the  decision  of  the  examiner  lef using  to 
register  the  word  "Hansa"  as  a  trade-mark  for  lard,  sausages 
and  bacon  on  the  ground  that  as  it  is  the  name  of  a  trading 
league  comprising  the  cities  of  Hamburg,  Lubeck,  and  Bremen, 
known  as  "the  Hansa,"  it  is  geographical  in  character.  Held, 
that  the  word  has  no  such  geographical  character  to-day  as 
would  forbid  its  registration.      (June  10,  1899.) 

DuELL,  C]     Ex  parte  Tietgens  &  Robertson,  87  0.  G.  2117. 

2.  As  the  word  "Hansa"  Avas  registered  in  Germany  under 
the  German  law,  which  prohibits  registration  of  words  which 
are  of  a  geographical  character,  any  doubt  of  the  propriety  of 
registering  it  here  should  be  waived,  as  the  German  Patent  Of- 
fice is  eminently  qualified  to  pass  upon  the  question  of  the  geo- 
graphical character  of  the  word,  and  its  decision  is  entitled  to 
respect,  although  in  no  manner  controlling.  (Carter  v.  Woll- 
schlaeger,  53  Fed.  Rep.  573,  cited. )  Id. 

A  word-symbol  to  be  refused  registration  because  of  its  geo- 
graphical character  must  refer  to  some  specific  locality.       Id. 

3.  The  words  "  BufTalo  Pitts"  as  a  trade-mark  for  agricultu- 
ral machinery  refused  registration,  the  word  "Pitts"  being  an 
ordinary  surname  and  a  salient  feature  of  applicant's  name  and 
the  word  "  Buffalo  "  being  a  geographical  term  and  also  a  part 
of  applicant's  name,  it  being  well  settled  that  ordinary  surnames 
and  geographically-descriptive  words  are  not  registrable.  (Nov, 
24,  1899.) 

DuELL,  C]     Ex  parte  Bufl'alo  Pitts  Co.,  89  0.  G.  2069. 


284  TRADE    MAKKS    AND    TRADE    NAMES. 

XIII.    Infringement. 

(a)  In  General. 
No  one,  who  has  counterfeited  a  legitimate  trade-mark  and 
apphed  the  spurious  S3'mbol  in  competition  Avith  the  genuine, 
can  avoid  the  charge  of  infringement  by  showing  that  the  false 
mark  has,  in  practice,  been  so  accompanied,  on  labels,  capsules 
or  otherwise,  by  trade-names,  designations,  descriptions  or 
other  accessories,  not  forming  part  of  it,  as  to  render  it  unlikely 
that  the  public  has  been  deceived.  Such  a  showing,  while  it 
may  effect  the  nature  or  measure  of  the  relief  to  be  granted 
cannot  defeat  a  suit  for  infringement.  (C.  C. ,  D.  N.  Jer. 
Aug.  5,  1899.) 

Bradford,  J.]     ^=Bass,   Ratcliff  &  Gretton,   Lim.  v.  Christian 
Feigenspan,  96  Fed.  Rep.  206. 

XIII.  Infringement. 

{h)  Particukir  Qises. 

1.  The  word  "Uneeda"  as  applied  to  a  biscuit  is  a  proper^ 
trade-mark,  and  the  owner  thereof  is  entitled  to  an  injunction 
against  the  use  of  the  word  "  Iwanta"  when  applied  by  another 
to  a  similar  biscuit  put  up  and  sold  to  dealers  in  similar  pack- 
ages such  as  would  be  likely  to  deceive  the  public.  It  is  imma- 
terial that  the  dealers  themselves  are  not  deceived.  No  one 
expects  they  will  be.  It  is  the  probable  experience  of  the  pub- 
lic that  the  court  considers.  (C.  C,  S.  D.  N.  Y.  June  27, 
1899.) 

Lacombe,  J.]     *Nat'l  Biscuit  Co.  v.  Baker  et  al.^  95  Fed.  Rep. 
135. 

2.  The  complainant's  trade-mark  for  pale-ale,  consisting  of 
an  equitateral  triangular  figure,  which,  as  applied  to  bottled 
pale-ale,  is  colored  red,  is  infringed  by  the  defendant's  mark  as 
applied  to  pale-ale  and  half-and-half,  consisting  of  a  red  tri- 
angle nearly  equilateral,  a  narrow  gold  border  surrounding  and 
binding  it,  a  monogram  composed  of  the  letters  C  and  F  in  the 
middle,  and  some  fine  scroll  ornamentation  in  the  middle. 
(C.  C,  D.  N.  Jer.     Aug.  5,  1899.) 

Bradford,  J.]     *Bass,   Ratcliff  &  Gretton,   Lim.  v.  Christian 
Feigenspan,  96  Fed.  Rep.  206. 


TRADE    MARKS    AND    TRADE    NAMES.  285 

3.  Courts  should  not  be  astute  to  recognize  in  favor  of  a 
trade-mark  infringer,  fine  distinctions  between  different  articles 
of  merchandise  of  the  same  general  nature,  and  should  resolve 
against  the  wrongdoer  any  fair  doubt  whether  the  public  may 
or  may  not  be  deceived  through  the  tlie  application  of  the 
spurious  symbol;  and  hence,  pale-ale  and  half-and-half  must, 
as  against  an  infringer  of  a  trade-mark  for  the  former,  be  treated 
as  malt  liquors  substantially  similar  to  each  other  and  belong- 
ing to  the  same  class.  */(i. 

XIV.   Injunction. 

1.  The  soap  sold  by  the  defendants  is  like  that  of  the  com- 
plainants in  shape  and  size,  and  in  the  mark  "a  base  de 
Glycerine."  It  differs  however  in  color  and  has  for  a  distinc- 
tive name  "Rose  de  France"  instead  of  "  La  Parisienne. "  It 
has  not  been  made  to  appear  that  any  one  has  been  deceived  or 
induced  by  similarity  to  buy  the  soap  sold  by  the  defendants 
for  that  of  the  complainants,  and  the  facts  presented  do  not 
.furnish  a  sufficient  ground  upon  which  to  base  a  right  to  a  pre- 
liminary injunction  restraining  defendants  from  selling  soap 
such  as  described,  upon  the  ground  of  deceit,  or  that  by  so 
doing  they  unfairly  compete  in  trade  with  the  complainants. 
(C.  C,  D.  N.  J.     May  15,  1899.) 

KiRKPATRicK,  J.]     *Kroppf  et  al.  v.  Furst  et  a?.,  94  Fed.  Rep. 
150. 

2.  He  who  applies  a  false  trade-mark  has  no  just  cause  of 
complaint  if  he  is  prevented  from  further  violating  the  exclusive 
right  of  the  lawful  employer  of  the  genuine  symbol,  and  he 
should  not  be  allowed,  at  the  peril  of  the  latter,  fraudulently  to 
experiment  in  the  use  of  such  false  mark  with  accessories  of 
varjdng  character,  with  the  double  purpose  of  filching  the  cus- 
tom of  a  business  rival,  and  at  the  same  time  shielding  himself 
from  the  consequences  of  infringement.  (C.  C,  D.  N.  Jer. 
Aug.  5,  1899.) 

Bradford,  J.]     *  Bass,   Ratcliff  &  Gretton,  Lim.  r.  Christian 
Feigenspan,  96  Fed.  Rep.  206. 

3.  Relief  by  injunction  is  sometimes  granted  in  cases  where 
the  party  enjoined  is  using  as  a  trade-mark  or  distinguishing 
name  which   is  geographical  or  descriptive  in   character,   and 


286  TRADE    MARKS    AND    TRADE    NAMES. 

therefore  could  not  be  exclusively  appropriated  by  the  party  se- 
curing the  relief,  but  the  relief  is  granted,  not  because  of  an  ex- 
clusive right  to  appropriate  such  words,  but  because  of  fraud 
and  deception  in  their  adoption,  and  similar  methods  of  their 
use  with  the  purpose  and  intention  of  attracting  customers  away 
from  rivals  in  business.  (C.  C,  S.  D.  Texas.  Oct.  10,  1899.) 
Meek,  J.]  '-^^  Continental  Ins.  Co.  r.  Continental  Fire  Ass'n,  96 
Fed.  Rep.  846. 
4.  Where,  in  a  suit  to  enjoin  the  infringement  of  a  trade- 
mark, no  allegation  or  showing  is  made  as  to  any  insolvency  of 
defendant,  and  no  showing  of  irreparable  injury  to  plaintiff  as 
liable  to  occur  during  the  i)endency  of  the  suit,  nor  that  the 
output  of  defendant's  works  is  so  great  as  materially  to  affect 
the  market  as  against  plaintiff's  output,  meanwhile.  Held,  that 
a  preliminary  injunction  should  not  issue  without  strong  show- 
ing therefor,  and  especially  where  the  right  to  relief  prayed  for  is 
squarely  put  in  issue,  and  result  not  clear  beyond  the  pleadings, 
and  where  its  issuance  would  tend  to  disturb  the  established 
and  long-continued  business  of  a  manufacturing  concern.  (C. 
C,  S.  D.  Iowa  C.  D.     Sept.  12,  1899.) 

WooLsoN,  J.]     *  E.   T.   Fairbanks  &  Co.  v.  Des  Moines  Scale 
&  Mfg.  Co.,  96  Fed.  Rep.  972. 

XV.   Interference. 

1.  It  is  not  an  essential  and  important  prerequisite  that  a 
mark  should  1)6  affixed  or  attached  to  the  goods  with  which  it  is 
used  to  make  it  a  valid  trade-mark.  It  is  sufficient  if  the  mark 
is  so  associated  irith  the  goods  as  to  distinguish  them  by  the  par- 
ticular mark.      (.Jan.  27,  1899.) 

DuELL,  C]     Hay  &  Todd  Mfg.   Co.  r.  Querns  Bros.,  86  0.  G. 
{323. 

2.  Where  a  mark  was  used  by  a  company  and  it  became 
recognized  by  the  trade  as  the  distinguishing  mark  of  its  goods, 
although  not  actually  affixed  thereto,  Held,  that  it  is  in  a  posi- 
tion to  invoke  the  aid  of  equity  for  the  protection  of  its  rights. 

Id. 

3.  Where  the  mark  in  question  had  been  so  associated  with 
the  goods  of  the  junior  party,  although  not  actually  affixed 
thereto,    that  they  had  become  known   to  the  trade    by  that 


TRADE    MARKS    AND    TRADE    NAMES.  287 

mark,  it  would  be  an  injustice  to  award  })riority  to  its  adver- 
sary, who  actually  aflixod  the  mark  to  the  goods,  but  was  the 
later  to  adopt  it.  Id. 

4.  Where  an  interference  was  declared  between  an  ajiplica- 
tion  of  B,  for  the  registry  of  the  words  "  American  Volunteer  " 
for  men's  boots  and  shoes,  and  an  application  of  R  for  the  regis- 
try of  the  word  "Volunteer"  for  overshoes,  the  issue  being 
stated  to  be  "  The  word  'Volunteer,'  for  overshoes,"  IMd^  that 
the  issue  in  respect  to  the  class  of  goods  is  narrower  than  the 
class  of  goods  upon  which  B  uses  his  mark,  and  under  the  rule 
in  Hernsheim  et  cd.  v.  Hargravc  et  cd.  (81  0.  G.  503)  there  has 
been  such  irregularity  in  declaring  the  interference  that  it 
should  be  dissolved.     ^(Oct.  13,  1899.) 

DuELL,   C]     Joseph   Bannigan   Rubber  Co.    r.   Bloomingdale, 
89  0.  G.  1670. 

5.  Held,  further,  that  as  the  parties  have  taken  testimony  and 
the  case  has  been  submitted  on  final  hearing,  and  as  there  is 
no  dispute  as  to  the  facts  disclosed  by  the  record,  no  good  pur- 
pose would  be  subserved  by  directing  the  examiner  to  redeclare 
the  interference;  but  it  is  decided  that  as  B  had  used  the  words 
"American  Volunteer"  in  connection  with  men's  shoes  before 
R  used  the  word  "  Volunteer  "  in  connection  with  overshoes,  he 
is  entitled  as  l)etween  the  two  to  have  the  mark  registered.   /(/. 

6.  Held,  further,  that  wdiether  or  not  R  is  entitled  to  have 
his  mark  "Volunteer"  registered  for  use  in  connection  with 
overshoes  is  an  ex  parte  question  to  be  determined  in  the  first 
instance  by  the  examiner.  '  Id. 

XVI.  Jurisdiction  of  Courts. 

1.  In  the  case  of  the  infringement  of  a  trade-mark  existing  at 
the  common  law,  or  in  cases  of  unfair  trade,  in  order  to  confer 
jurisdiction  upon  the  courts  of  the  United  States,  there  must 
exist  diverse  citizenship  of  the  parties,  and  that  diverse  citi- 
zenship must  appear  upon  the  record.  The  term  "  inhabitant " 
or  "resident"  does  not  necessarily  imply  "citizenship"  and 
cannot  be  substituted  for  it.  (C.  C.  A.,  7th  Cir.  Nov.  11, 
1898. ) 

Jenkins,  J.]     ^==  Allen  B.  Wrisley  Co.  r.  Geo.  E.  Rouse  Soap  Co. 
et  al,  90  Fed.  Rep.  5, 


288  TRADE    MARKS    AND    TRADP:    NAMES. 

2.  In  the  absence  of  the  proi)er  allegations  of  citizenship,  in 
order  to  bring  the  case  within  the  provisions  of  the  statute  (21 
Stat.  502)  there  must  be  a  showing  that  the  trade-mark  in- 
volved is  used  upon  goods  intended  to  be  transported  to  a  for- 
eign country,  or  in  lawful  connnercial  intercourse  Avith  an 
an  Indian  tribe.  Otherwise,  the  federal  courts  are  without 
jurisdiction.  *  Id. 

3.  The  fact  that  the  word  "  Elgin  "  had  acquired  a  secondary 
signification  might  be  forceful  if  the  word  were  shown  to  be  used 
to  palm  off  the  goods  of  one  as  the  goods  of  another,  which, 
coupled  with  other  evidence  evincing  intent  to  mislead  and  de- 
fraud, would  be  operative  to  move  a  court  of  equity  to  prevent 
the  wrong,  and  the  Federal  Court  would  not  have  jurisdiction 
in  such  case  unless  there  exist  and  appear  from  the  record  the 
necessary  diverse  citizenship  of  the  parties.  The  remedy  for 
fraud  existed  before  the  statute  relating  to  trade-marks  and  was 
not  given  by  it,  but  recognizing  the  iitvalidity  of  the  trade-mark 
was  applied  for  the  prevention  of  fraud.  (C.  C.  A.,  7th  Cir. 
June  6,  1899.) 

Jenkins,  J.]  *  Illinois  Watch  Case  Co.  et  al.  v.  Elgin  Nat'l 
Watch  Co.,  94  Fed.  Rep.  667;  87  0.  G. 
2323. 

4.  The  courts  of  the  state  furnish  ample  remedy  for  the 
wrong,  if  any,  under  which  the  appellee  suffers,  and  the  Federal 
Courts  have  no  right  to  redress  or  prevent  trespass  upon  the 
common-law  rights  of  the  appellee,  the  citizenship  of  the  parties 
forbidding  jurisdiction.  If  it  were  allowable  to  a  Federal 
Court  to  assume  jurisdiction  to  grant  equitable  relief  upon  the 
ground  of  fraud,  the  relief  could  only  extend  in  restraint  of  the 
wrong  so  far  as  it  affected  foreign  commerce  and  commerce  Avith 
the  Indian  tribes.  */(i. 

XYII.   Practice  in  the  Patent  Office. 

1.  It  is  incumbent  upon  the  various  tribunals  of  the  Patent 
Office  having  in  charge  the  registration  of  trade-marks  when  an 
application  for  registration  is  filed  to  decide  at  the  outset  two 
questions:  (1)  Is  applicant  the  owner,  and  (2)  is  that  which  he 
seeks  to  register  a  trade-mark?  (May  18,  1899.) 
Duell,  C]     Ex  j)arte  The  Bronson  Company,  87  0.  G.  1782. 


TKADK    MAUKS    AND    TIJADK    NAMES.  289 

2.  Tlie  tribunals  of  tlic  I'atcnt  Ollicc  in  deciding  the  (iiU'stion 
of  ownership  are  not  precluded  by  the  statement  and  declaration 
of  ownership  made  by  the  applicant  from  considering  and  decid- 
ing whether  he  is  or  is  not  the  owner  of  the  thing  sought  to  be 
registered.  /''■ 

3.  It  is  the  i)rovince  antl  duty  of  the  tril)\uials  of  tbe  Patent 
Office  having  jurisdiction  of  tlie  registration  of  trade-marks  to 
decide  whether  the  thing  presented  for  registration  is  a  trade- 
mark. An  applicant  may  be  the  owner  of  the  tiling  alleged  to 
be  his  trade-mark,  and  yet  the  thing  i)resented  for  registration 
may  not  be  a  trade-mark.  The  statement  and  declaration  of 
applicant  that  the  thing  presented  for  registration  is  a  trade- 
mark are  not  conclusive.  Id. 

X-VIII.   Registration. 

1.  An  association  of  manufacturers  which  as  an  association 
does  not  make,  brand,  or  sell  the  article  of  merchandise  in  con- 
nection with  which  the  trade-mark  is  used  is  not  entitled  under 
the  Act  of  March  3,  1881,  to  register  a  trade-mark.  (Feb.  3, 
1899.) 

DuELL,  C]      Ex  ixirte  The  Anti- Adulteration  League,  86  0.  G. 
1803. 

2.  The  right  to  register  a  trade-mark  in  the  Patent  Office  is  a 
statutory  one,  and  the  action  of  the  Office  in  registering  trade- 
marks is  limited  by  the  terms  of  the  Acts  of  March  3,  1881,  and 
August  5,  1882.  The  latter  act  need  not  be  considered,  and  if 
there  is  a  statutory  right  vested  in  appellant  to  register  the 
mark  it  must  be  found  in  the  Act  of  March  3,  1881.  B}'  that 
act  it  is  provided — 

that  the  owners  of  trade-marks  used  in  commerce  with  foreign  nations  or  with  tlie  Indian 
tribes,  provided  such  owners  shall  be  domiciled  in  the  United  States  or  located  in  any 
foreign  country  or  tribe,  which,  by  treaty,  convention,  or  law,  affords  similar  privileges 
to  citizens  of  the  United  States,  may  obtain  registration  of  such  trade-marks  by  comply- 
ing with  certain  requirements. 

Section  2  provides  that  the  statement  which  is  to  be  recorded 
must  be  accompanied  by — 

a  written  declaration  verified  by  the  person,  or  by  a  member  of  a  firm,  or  by  an  officer  of 
a  corporation  applying,  to  the  effect  that  such  party  has  at  the  time  a  right  to  the  use  of 
the  trade-mark  sought  to  be  registered,  and  that  no  other  person,  firm  or  corporation  has 
the  right  to  such  use,  either  in  the  identical  form  or  in  any  such  near  resemblance 
thereto  as  might  be  calculated  to  deceive. 

19 


290  TRADE    MARKS    AND    TRADE    NAMES. 

Authority  is  vested  in  the  Commissioner  to  decide  the  pre- 
sumptive lawfulness  of  claim  to  the  alleged  trade-mark.     Id. 

3.  While  appellant  has  adopted  the  mark,  and  without  doubt 
is  entitled  to  it,  yet  within  tlie  meaning  of  the  term  ^^  owners" 
as  employed  in  the  trade-mark  act  it  does  not  own  the  mark. 
The  only  ownership  vested  in  appellant  is  that  which  arises 
from  the  adoption,  and  that  under  the  law  is  not  sufficient. 
Adoption  must  be  followed  by  use.  Id. 

4.  There  is  no  authority  in  the  trade-mark  act  permitting  the 
Patent  Office  to  register  a  trade-mark  the  right  to  use  which  is 
farmed  out  and  which  is  not  actually  used  by  the  would-be 
registrant.  Id. 

5.  The  Office  should  not  register  a  composite  trade-mark  all 
the  features  of  which  are  objectionable  either  as  being  anticipated 
or  not  a  proper  subject  for  registry.      (Feb.  15,  1899.) 
DuELL,  C]     Eximrte  Guenther  MilHng  Co.,  86  0.  G.  1986. 

XIX.  Eight  to  Use  Name  of  Patented  Article. 

1.  The  patent  under  which  the  medicine  known  by  the  name 
of  "Castoria"  was  manufactured  and  sold  having  expired  in 
1885,  the  name  which  was  descriptive  of  the  article  became 
public  property  and  no  trade-mark  right  exists  therein,  nor 
could  such  right  be  acquired  by  subsequent  use.  The  right  to 
manufacture  Castoria  and  the  right  to  use  the  name  in  selling  it 
are  both  public  property.  (Singer  Mfg.  Co.  v.  June  jMfg.  Co., 
163  U.  S.  169;  16  Sup.  Ct.  1002.)  (C.  C,  W.  D.  Mo.  W.  D. 
Feb.  6,  1899.) 

Phillips.  J.]     *  Centaur  Co.  v.  Marshall  ct  ah,  92  Fed.   Rep. 
605. 

2.  Where  the  trade-mark  antedated  the  patent  relating  to  the 
article  to  which  the  trade-mark  was  applied  by  more  than  2|- 
years,  and  so  far  as  can  be  seen,  it  was  the  name  and  not  the 
patent  which  gave  value  to  the  article.  i/cW,  that  the  exclusive 
right  to  use  the  trade-inark  did  not  cease  upon  the  expiration  of 
the  patent.     (C.  C.  A.,  2d  Cir.     Apr.  4,  1899.) 

Shipman,  J.]     ^  Batcheller  f.  Thomson  (2  cases). 

Thomson  r.  Batcheller,  93  Fed.  Rep.  630. 


THADK    MARKS    AND    TRADE    NAMES.  291 

XX.   Right  to  Use  Personal  Name. 

1.  The  word  ''  '  Feathorstone '  in  script  letters,  in  a  diagonal 
line,  and  with  a  forwardly-extending  understroke  or  flourish," 
is  merely  the  name  of  the  applicant  and  is  not  registrable  in 
view  of  section  o  of  the  trade-mark  act  of  March  3,  1881. 
(Jan.  27,  1899.) 

DuELL,  C]      Ex  parlc  A.  Featherstone  &  Co.,  86  0.  (1.  1497. 

2.  The  name  of  an  applicant  docs  not  cease  to  be  merely  the 
name  of  the  applicant  l)ecause  it  is  in  script  letters  and  disposed 
diagonally.  Its  use  is  an  attempt  to  appropriate  that  which 
cannot  be  lawfully  appropriated  against  others  of  the  same 
name.  Id. 

3.  Where  an  applicant  sought  to  register  as  a  trade-mark  the 
words  "Guenther's  Best"  surrounded  by  the  representation  of 
a  circular  belt  or  zone  bearing  a  Avreath  of  wheat-ears.  Held, 
that  the  mark  should  not  be  registered,  as  "Guenther"  is  an 
ordinary  surname  and  the  salient  feature  of  applicant's  name, 
while  the  word  "  Best"  is  descriptive,  and  that  the  circular  belt 
or  zone  cannot  impart  any  registrable  quality  to  the  symbol,  as 
the  belt  or  zone  is  non-essential.     (Feb.  15,  1899.) 

DuELL,  C]     Ex  parte  Guenther  Milling  Co.,  86  0.  G.  1986. 

4.  ' '  ^Mlile  the  right  can  be  denied  to  no  one  to  employ  his 
name  in  connection  with  his  business,  or  in  connection  with 
articles  of  his  own  production,  so  as  to  show  the  business  or 
product  to  be  his,  yet  he  should  not  be  allowed  to  designate  his 
article  by  his  own  name  in  such  way  as  to  cause  it  to  be  mistaken 
for  the  manufacture  or  goods  of  another  already  on  the  market 
under  the  same  or  a  similar  name.  Whether  it  be  his  name  or 
some  other  possession,  every  one,  by  the  familiar  maxim,  must 
so  use  his  own  as  not  to  injure  the  possession  or  rights  of  an- 
other."    (C.  C.  A.,  7th  Cir.     Jan.  3,  1899.) 

Jenkins,  J.]     *  Stuart  v.  F.  G.  Stewart  Co.  et  al,  91  Fed.  Rep. 
243. 

5.  A  man  may  not  use  his  own  nan)e  to  accomjilish  a  fraud, 
designed  or  constructive.  '-^Id. 

6.  A  man  has  no  right  to  use  his  own  name,  if  he  uses  it  in 
such  away  as  that  he  misleads  the  pul)lic,  to  thtir  injury,  by 
imi^osing  upon  them  ailicles  of  his  manufacture  as  those  man- 


292  TRADE    MARKS    AND    TRADE    NAMES. 

ufacturcd   by  somebody  else,  who  hr.s  a  ])rior  right  to   use  the 
same  name  as  his.      (C.  C,  D.  Ind.     Feb.  10,  1899.) 
Baker,  J.]     *  Centaur  Co.  r.  Robinson,  91  Fed.  Rep.  .S89. 

7.  W'^hile  one  cannot  obtain  the  exclusive  right  to  use  a  geo- 
graphical name  as  a  trade-mark,  and  cannot  make  a  trade  ma.rk 
of  his  own  name  to  deprive  another  of  the  same  name  from 
using  it  in  his  business,  that  other  may  not  resort  to  arti^ce  to 
do  that  which  is  calculated  to  deceive  the  public  as  to  the  iden- 
tity of  the  business  or  of  the  article  produced  and  so  create 
injury  to  the  other  beyond  that  which  results  from  the  similar- 
ity of  the  name.  (C.  C.  A.,  7th  Cir.  June  6,  1899.) 
Jenkins,  J.]     *  Illinois  Watch  Case  Co.  et  al.  v.  Elgin  National 

Watch  Co.,   94  Fed.   Rep.   667;    87  0.    G. 
2323. 

8.  This  doctrine  does  not  proceed  upon  the  ground  of  the  in- 
fringement of  a  trade-mark,  but  upon  the  ground  of  fraud,  and 
that  equity  will  not  permit  one,  aside  from  any  question  of  trade- 
mark, to  palm  off  his  goods  as  the  goods  of  another  and  so  de- 
ceive the  public  and  injure  that  other.  ^Id. 

9.  It  is  not  necessary  in  such  cases  in  order  to  give  a  right  to 
an  injunction  that  a  specific  trade-mark  should  be  infringed, 
but  that  the  conduct  of  the  party  should  show  an  intent  to  palm 
off  his  goods  as  the  goods  of  another.  The  allegations  respect- 
ing trade-marks  are  in  such  cases  only  "regarded  as  matter  of 
inducement    leading   up    to   the    question    of    actual    fraud." 

XXI.   Statute,  Construed. 

1.  The  })hrase  "owners  of  trade-marks"  apj^earing  in  the 
act  of  March  3,  1884,  manifestly  limits  the  right  of  registration 
to  such  person  or  persons,  natural  or  artificial,  as  jDossess  the 
legal  title  to  that  for  which  registration  is  sought,  and  it  further 
limits  the  right  of  registration  to  that  which  is  a  trade-mark. 
(May  18,  1899.) 

Duell,  C]      Ex  parte  The  Bronson  Company,  87  0.  (1.  1782. 

2.  There  is  nothing  in  section  13  of  the  trade-mark  act  which 
takes  this  case  outside  the  authorities  because  registration  is 
desired  for  the  purpose  of  registering  the  alleged  trade-mark  in 


TKADE  MAUKf'  AND  THADK  NAMKS.  293 

a  foreign  countrv,  \vhcrc  as  a  condition  precedent  to  such  foreign 
registration  })rior  registration  in   the  home  country  of  tlic  a))i)li- 
cant  must  first  be  had.      (Nov.  24,  1809. ) 
DuELL,  C]     ExjMrte  Buffalo-Pitts  Co.,  89  0.  (i.  2069. 

3.  No  additional  rights  are  conferred  upon  citizens  and  resi- 
dents of  this  country  under  section  13  of  the  trade-mark  act 
•which  are  not  conferred  upon  them  under  the  other  i)rovisions 
of  the  act.  /'/. 

4.  A  foreigner  is  not  entitled  to  any  other  or  further  riglits 
than  those  given  to  citizens  of  the  United  States.  The  phrase 
"  as  is  above  allowed  to  foreigners"  renders  section  13  of  the 
trade-mark  act  meaningless.  /(/. 

5.  Congress  did  not  intend  to  permit  the  registration  of  un- 
lawful trade-marks  simply  for  the  purpose  of  permitting  the 
owner  of  such  unlawful  trade-marks  to  register  the  same  in  a 
foreign  country.  Id. 

6.  The  trade-mark  act  does  not  make  the  Patent  OfRc^e  merely 
a  registration  office  and  compel  the  Commissioner  to  register  a 
trade-mark  without  permitting  him  to  pass  upon  the  lawfulness 
of  the  trade-mark  presented  for  registry.  Id. 

7.  The  registry  of  a  trade-mark  under  the  Act  of  Mar.  3, 
1881,  neither  adds  anything  to  nor  takes  anything  from  the 
right  of  ownership  in  such  trade-marks,  and  in  a  suit  not 
pitched  upon  the  statute  (/.  e.,  in  a  suit  between  citizens  of 
different  states,  alleging  infringement  generally,  covering  state 
and  interstate  commerce)  the  fact  that  the  trade-mark  is  regis- 
tered vel  non,  is  a  matter  of  utter  irrelevance,  for  the  act  above 
referred  to  only  makes  registry  'prima  fade  evidence  of  owner- 
ship. Trade-marks  do  not  lie  in  the  sphere  of  patents  and 
copyrights.  The  former  are  common  law  rights  of  property  in 
devices  used  in  trade  to  indicate  origin,  quality,  grade  or  source 
of  manufacture  of  certain  articles,  while  the  latter  are  govern- 
mental grants  of  exclusive  privileges,  and  the  federal  govern- 
ment has  sole  and  exclusive  legislative  authority  over  them. 
(C.  C.  A.,  5th  Cir.     Apr.  11,  1899.) 

Pardee,  J.]     *Sarrazin  v.   W.   R.   Irby  Cigar  &  Tobacco  Co. 
Lim.,  93  Fed.  Rep.  624.     88  0.  G.  387. 

8.  The   constitutionality    of    the   trade-mark    act    approved 


294  TRADE    MARKS    AND   TRADE    NAMES. 

March  3,  1881,  held  to  be  fairly  doulAful.      (C.  C.  A.,  7th  Cir. 
June  6,  1899.) 

Jenkins,  J.]  *  Illinois  Watch  Case  Co.  ct  al.  v.  Elgin  Nat'l 
Watch  Co.,  94  Fed.  Rep.  667.  87  0.  G.  2323. 
9.  The  trade-mark  act  does  not  define  what  shall  constitute  a 
trade-mark.  To  determine  what  the  trade-mark  is  which  is 
protected  by  the  act,  reference  must  be  made  to  the  common 
law.  *Id. 

XXII.  Unfair  Competition. 

1.  The  defendant's  use  of  boxes  or  cartons  similar  to  the 
plaintiff's  and  nothing  more,  could  not  be  complained  of,  for  it 
is  a  common  method  of  packing  various  articles  of  merchandise; 
and  even  if  the  complainant  Avas  the  first  to  apply  it  to  packing 
catsup,  he  has  not  thereby  obtained  a  monopoly  of  its  use  for 
that  purpose.  Where  the  question  as  to  whether  the  imitation 
of  packages,  boxes  and  stamps  complained  of  is  such  as  is  likely 
to  impose  on  ordinary  i)urchasers,  exercising  such  care  only  as  is 
commonly  used  in  purchasing  such  articles,  cannot  be  answered 
with  certainty  or  safety,  in  the  absence  of  proof  that  any  one 
has  actually  been  misled,  a  motion  for  a  preliminary  injunction 
was  properly  denied.  (C.  C.  A.,  3d  Cir.  Nov.  28^  1898.) 
Butler,  J.]     *Van  Camp  Packing  Co.   r.   Cruikshanks  Bros. 

Co.  90  Fed.  Rep.  814. 

2.  Complainants  originated,  and  have  for  many  years  used, 
a  rose  or  brilliant  copjoer-colored  soft  metal  capsule  embossed 
with  their  name,  and  other  devices  as  a  distinguishing  mark  for 
their  wine;  and  by  reason  of  the  practice  of  serving  such  wine 
from  an  ice-chest  or  in  coolers,  the  bottle  is  liable  to  lose  its 
labels  before  it  is  shown  to  the  customer,  so  that  in  such  case 
the  capsule  is  the  only  easily-available  means  of  identification. 
Defendants  are  not  producers  or  dealers  in  champagne,  but 
make  and  sell  bottlers'  supplies. — The  widespread  use  of  col- 
ored capsules  among  producers  of  champagne,  however,  does 
not  preclude  protection  to  each  separate  producer  in  the  use  of 
his  own  color  without  depriving  some  new  comer  of  the  right 
himself  to  select  and  use  a  colored  capsule.  The  possible  com- 
binations of  color  are  so  manifold  that  it  is  hard  to  conceive 
how  such  new  comer,  honestly  endeavoring  to  dress  his  goods 


THADE    MAUKS    AND    TKADE    NAMES.  295 

in  such  wise  as  to  mark  thoni  as  his  own,  could  experience  any 
difficulty  in  devising  a  new  capsule.  Com})lainants  are  not 
entitled  to  a  decree  enjoining  the  sale  merely  of  a  rose-colored 
capsule,  luiembossed,  or  even  with  the  words  "Extra  Dry" 
impressed  thereon,  though  of  the  same  size  and  shape,  in  the 
absence  of  evidence  that  it  was  not  used  in  a  manner  to  deceive 
customers  to  comi)lainants'  damage,  where  it  is  capable  of  such 
a  use  as  not  to  injure  complainants.  (C.  C.  A.,  2d  Cir.  Dec. 
7,  1898.) 

Per  CuKTAM.]     *Von   INIum  et  al.  v.  Witteman  et  al.,  91   Fed. 
Rep.  126. 

3.  Where  a  wrapper  for  a  medicine  package  contains  an  erro- 
neous statement  as  to  the  general  character  of  the  contents  of 
the  package,  but  truthfully  gives  the  formula  in  accordance 
with  which  the  medicine  is  made,  it  does  not  constitute  such 
fraud  as  will  defeat  the  manufacturer's  right  to  relief  from 
unfair  competition.  (0.  C,  D.  Ind.  Feb.  10,  1899.) 
Baker,  J.]     ^K^entaur  Co.  v.  Robinson,  91  Fed.  Rep.  889. 

4.  If  the  Centaur  Co.  through  years  of  experience  and  labor  in 
building  up  a  trade,  has  caused  the  public  to  become  ac- 
quainted with  an  article  of  its  manufacture  to  which  they  have 
given  the  name  "Castoria,"  even  though  it  may  not  have  the 
exclusive  right  to  the  use  of  that  name,  still  other  persons  have 
no  right  to  appropriate  the  name  in  connection  with  a  medicine 
put  up  in  bottles  and  having  wrappers,  and  a  dressing  up  of 
the  goods  in  such  a  way  that  an  intending  purchaser  would  be 
deceived  into  buying  it  when  lie  intended  to  buy  that  prepared 
by  the  Centaur  Co.  */'/• 

5.  Where  the  most  casual  inspection  of  the  wrappings  of 
defendant's  packages,  their  size,  shape,  the  method  of  wrai)i)ing, 
and  the  general  impression  from  the  imprint  on  them,  shows 
that  they  do  not  have  such  dissimilarity  as  would  arouse  the 
suspicion  of  a  careless  or  unwary  purchaser,  it  amounts  to  evi- 
dence of  an  intend(Ml  imposition  which  will  be  restrained. 

G.  While  the  manufacture  of  "Castoria"  is  free  to  all  since 
the  expiration  of  the  i)atent,  yet  no  one  has  the  right  to  dress 
his  goods  up  in  such  a  manner  as  to  deceive  an  intending  })ur- 


296  TRADE    MARKS    AND    TRADE    NAMES. 

chaser,  and  induce  him  to  believe  that  he  is  buying  those  of  the 
complainant.  Inasmuch  as  the  issue  raised  in  such  cases  is 
one  of  fraud,  of  deceitful  representation,  or  perfidious  dealing, 
the  intent  of  the  defendant  when  clearly  made  out  is  often 
illuminative  of  the  question  to  be  decided,  and  such  intent  may 
be  made  out  from  not  only  direct  testimony,  but  also  from  clear 
inference  from  all  the  circumstances,  even  where  the  defendant 
protests  that  his  intention  was  innocent.  (C.  C.  A.,  5th  Cir. 
Dec.  13,  1898.) 
SwAYNE,  J.]     *Centaur  Co.  v.  Neathery,  91  Fed.  Rep.  891. 

7.  In  putting  the  article  on  the  market  the  new  manufacturer 
must  clearly  identify  his  goods,  and  not  engage  in  unfair  com- 
petition, nor  do  anything  which  will  tend  to  deceive  the  public, 
and  induce  it  to  take  his  goods  under  the  belief  that  they  are 
the  goods  which  it, has  heretofore  Vjeen  accustomed  to  purchase 
under  the  same  name;  and  where  the  similarity  of  the  labels 
has  that  tendency  to  deceive,  and  such  similarity  evidently  the 
result  of  design  the  use  of  the  deceptive  label,  or  any  label 
substantially  similar  to  the  original  label,  which  is  calculated  to 
deceive  the  public  will  be  enjoined.  */rf. 

8.  Where  the  respondents'  packages  of  "Castoria"  have 
been  so  bottled,  labeled,  prepared,  and  put  upon  the  market  in 
such  a  form  as  is  calculated  to  deceive,  and  does  deceive  the 
public  into  the  belief  that  they  are  buying  the  preparation 
manufactured  and  put  up  by  the  complainant,  they  have  thus 
infringed  upon  its  lawful  rights  and  are  likely  to  interfere  with 
its  legitimate  profits  in  the  sale  of  its  preparation,  and  are  guilty 
of  unfair  and  fraudulent  business  methods,  and  will  therefore 
be  restrained.  (C.  C.  A.,  5th  Cir.  Dec.  13,  1898.) 
SwAYNE,  J.]     *  Centaur  Co.  r.  Hughes  Bros.  Mfg.  Co.,  91  Fed. 

Rep.  901. 

9.  It  is  not  the  test  of  infringement  to  find,  upon  comparison, 
dissimilarities  in  two  trade-mark  wrappers.  The  purchaser  has 
not  the  advantage  of  comparison,  and  he  is  required  only  to  use 
that  care  which  persons  ordinarily  exercise  under  like  circum- 
stances. A  specific  article  of  approved  excellence  comes  to  be 
known  by  certain  catch-words  easily  retained  in  memory,  or  by 
a  certain  picture  which  the  eye  readily  recognizes,  and  where  a 


TRADE    ISIAUKS    AND    TRADE    .\A:MES.  297 

purchaser  desiring  the  remedy  to  which  his  attention  had  heen 
attracted  by  advertisement,  or  which  he  had  before  purchased, 
and  knew  the  remedy  as  "Stuart's  Dyspepsia  Tablets,"  and 
that  it  was  in  a  blue  wrapper,  the  name  and  the  color  were  pres- 
ent to  him;  and  it  would  require  more  than  the  care  ordinarily 
used  under  like  circumstances  to  expect  that  he  Avould  be  warned 
by  the  prefix  "Dr.,"  or  to  expect  that  his  artistic  taste  should 
be  cultivated  to  a  degree  to  detect  the  difference  between  a  light 
blue  wrapper  and  an  indigo  blue  wrapper  in  a  hurried  purchase 
of  the  remedy.  (C.  C.  A.,  7th  Cir.  Jan.  3,  1899.) 
Jenkins,  J.]  =i' Stuart  r.  F.  G.  Stewart  Co.  et  al,  91  Fed.  Re]). 
243. 

10.  The  cardinal  rule  upon  the  subject  of  unfair  competition 
is  that  1.0  one  shall,  by  imitation  or  any  unfair  device,  induce 
the  public  to  believe  that  the  goods  he  offers  for  sale  are  the 
goods  of  another,  and  thereby  appropriate  to  himself  the  value 
of  the  reputation  which  the  other  has  acquired  by  his  own 
products  or  merchandise.  (C.  C.  A.,  6th  Cir,  Mar.  7,  1899.) 
Severens,  J.]     *  Proctor  &  Gamble  Co.  v.  Globe  Refining  Co., 

92  Fed.  Rep.  357. 

11.  One  cannot  make  an  exclusive  appropriation  of  words  or 
marks  which  he  puts  upon  his  goods,  and  which  simply  indi- 
cate their  superiority,  or  popularity,  or  universality  in  use,  and 
no  more.  If  he  could,  he  might  thus  absorb  a  privilege  which 
is  common  to  all.  */''^ 

12.  However  innocent  a  person  may  be  of  intentional  simu- 
tion  of  another's  trade-mark,  the  equitable  jjrinciples  which 
underlie  the  question  of  fair  trade  and  by  which  courts  of  ecpiity 
are  guided,  will  not  permit  the  use  of  such  trade-mark  if  such 
use  amounts  to  infringement  or  constructive  fraud.  The  act, 
however  innocent,  is  considered  constructively  fraudulent  if  the 
result  would  tend  to  unfair  trade,  to  confusion  of  goods,  and  to 
interference  with  the  rights  of  another.  (C.  C.  A.,  7th  Cir. 
Apr.  11,  1899.) 

Woods,  J.]     *  Manitowoc  Pea-Packing  Co.  r.  William  Nunison 
&  Sons,  93  Fed.  Rep.  196. 

13.  "  The  defendants  have  no  right  to  dress  their  goods  up  in 
such  manner  as  to  deceive  intending  purchasers,  and   induce 


298  TRADE    MARKS    AND    TRADE    NAMES. 

them  to  believe  they  are  buying  those  of  the  plaintiff;"  (Coats 
V.  Thread  Co.,  149  U.  S.  562,  13  Sup.  Ct.  96G)  but  the  similar- 
ity of  dress  which  will  warrant  the  interference  of  the  court 
must  be  determined  by  the  circumstances  of  each  case.  (C.  C. , 
D.  N.  J.     May  15,  1899.) 

KiRKPATRicK,  J.]     ^Kroppf  ct  al.  V.  Furst  et  al,  94  Fed.  Rep. 
150. 

14.  ^Miere  the  testator  of  defendant  began  the  manufacture 
of  artificial  water  in  New  York  in  1862,  and  continued  to  manu- 
facture and  sell  large  quantities,  advertising  it  as  "Schultz's 
Vichy  Water,"  and  was  solicitous  to  have  the  water  with  his 
name  as  its  manufacturer,  and  so  far  from  attempting  to  palm 
it  off  upon  the  public  as  natural  Vichy  water,  he  sought  to  com- 
mend it  as  an  artificial  water  having  substantially  the  ingredi- 
ents and  properties  of  the  natural  water,  but  of  greater  purity 
and  excellence  than  the  water  manufactured  by  his  competitors, 
Held,  that  Avhile  the  use  of  the  name  "Vichy"  in  connection 
with  the  water  made  l)y  Schultz  may  have  tended  to  divert 
to  some  extent  the  sales  of  the  complainants',  yet  it  did  not 
tend  to  appreciably  confuse  the  identity  of  the  two  articles,  for 
if  any  part  of  the  public  bought  or  used  "Shultz's  Vichy 
Water"  supposing  it  to  be  natural  Vichy  water,  they  must  have 
been  very  careless  or  very  ignorant  persons.  (C.  C. ,  S.  D.  N. 
Y.     May  23,  1899.) 

Wallace,  J.]     *La  Republique  Francaise  ci  a/,  v.  Schultz,  94 
Fed.  Rep.  500. 

15.  The  infringement  of  trade-marks  is  the  violation  by  one 
person  of  an  exclusive  right  of  another  person  to  the  use  of  a 
word,  mark  or  symbol.  Unfair  competition  in  trade,  as  distin- 
guished from  infringement  of  trade-marks,  does  not  involve  the 
violation  of  any  exclusive  right  to  the  use  of  a  word,  mark  or 
symbol.  Two  rivals  in  business  competing  with  each  other  in 
the  same  line  of  goods  may  have  an  equal  right  to  the  use  of 
the  same  w^ords,  marks  or  symbols  on  similar  articles  produced 
and  sold  b}^  them  respectively,  yet  if  such  words,  marks  or  sym- 
bols were  used  by  one  of  them  before  the  other  and  by  associa- 
tion have  come  to  indicate  to  the  public  that  the  goods  to  which 
they  are  applied  are  of  the  production  of  the  former,  the  latter 


TRADE    MARKS   AND   TRADE    NAMES.  299 

will  not  be  permitted,  -with  intent  to  mislead  the  pnblie,  to  use 
the  Avords,  marks  or  symbols  in  sueh  a  manner  by  trade-dress 
or  otherwise,  as  to  deceive  or  be  capable  of  deceivinjjf  the  ])ul)lic 
as  to  the  origin,  manufacture  or  ownership  of  the  articles  to 
which  they  are  applied;  and  the  latter  may  be  re(|uired,  when 
using  such  Avords,  marks  or  symbols,  to  place  on  the  articles  of 
his  own  production  or  the  packages  in  which  they  are  usually 
sold,  something  clearly  denoting  the  origin,  manufacture  or 
ownership  of  such  articles,  or  negativing  any  idea  that  they 
were  produced  or  sold  by  the  former.  (C.  C,  D.  Del.  INlay  5, 
1899.) 

Bradford,  J.]     ^^'Dennison  Mfg.  Co.  r.  Thomas  Mfg.  Co.,  94 
Fed.  Rep.  651. 

16.  The  rule  is  now  settled  that  a  preliminary  injunction 
against  unfair  competition  should  be  awarded  only  where  the 
right  is  plain  and  the  Avrong  beyond  reasonable  doubt;  and 
where  an  examination  of  the  envelopes  in  which  the  defendants 
enclose  and  sell  their  goods  discloses  that  they  are  a  misleading 
and  intentional  simulation  of  those  of  the  plaintiff,  an  injunc- 
tion against  their  use  will  be  awarded.  (C.  C,  E.  D.  Penn. 
June  27,  1899.) 

Dallas,  J.]     *  Draper  v.  Skerrett  cf  ah,  94  Fed.  Rep.  912. 

17.  The  courts  have  been  advancing  with  respect  to  the  ques- 
tion of  protecting  persons  in  their  legitimate  business  enterprises 
from  appropriation  by  others.  They  Avill  restrain  persons  who 
are  engaged  in  Avhat  is  called  "  unfair  competition  in  trade'' 
and  Avill  prevent  them  from  appropriating  the  fruits  of  skill  and 
enterprise  of  others,  "Irrespective  of  any  question  of  trade- 
marks, rival  manufacturers  have  no  right,  by  imitative  devices, 
to  beguile  the  public  into  buying  their  Avares  under  the  impres- 
sion that  they  are  buying  those  of  their  rivals."  (Coats  v. 
Thread  Co.,  149  U.  S."^562;  13  Sup.  Ct.  966.)  (C.  C,  N.  D. 
Cal.     June  5,  1899.) 

MoRROAV,  J.]     *  California  Fig-Syrup  Co.  v.  Worden   et  aJ.,  95 
Fed.  Rep.  182. 

18.  The  fact  that  a  preparation  may  not  as  a  medicine  ac- 
complish all  that  is  claimed  for  it  is  not  sufficient  evidence  of 
fraud  to  deprive  the  manufacturers  thereof  of  the  right  to  relief 
in  a  court  of  equity.  *Id. 


300  TRADE    MARKS    AND    TRADE    XAMES. 

19.  Where  complainant's  goods  had  for  25  years  ])een  put  up 
in  packages  of  cjdindrical  form,  enclosed  in  a  red  "wrapper,  and 
sold  as  "Franck's  Red  Roll  Cliicory, "  and  as  such  had  ac- 
quired a  certain  degree  of  popularity  in  certain  localities,  a  rival 
company  known  as  the  "Frank  Chicory  Company"  will  be 
restrained  from  putting  up  and  offering  for  sale  similar  goods 
in  similar  packages  under  the  same  colored  wrappers,  where 
such  packages  and  wrappers  are  colorable  imitations  of  those  of 
complainant,  even  though  the  name  of  the  rival  company  is 
changed  so  that  its  distinctive  part  no  longer  resembles  that  of 
the  complainant.  (C.  C,  E.  D.  Wis.  June  12,  1899.) 
Seaman,  J.]     *Franck  et  aJ.  v.   Frank   Chicory  Co.  et  al.,  95 

Fed.  Rep.  818. 

20.  Where  the  bill  alleges  that  the  complainants  and  defend- 
ant are  competitors  in  the  same  line  of  business;  that  the  de- 
fendant has  assumed  a  trade-name  similar  to,  and  in  imitation 
of  complainants'  trade-name,  and  the  public  has  been  deceived 
thereby,  and  great  confusion  and  injury  has  resulted  to  com- 
plainants' business  therefrom  ;  that  the  incorporators  of  the 
defendant  corporation,  before  its  organization,  knew  of  the 
existence  and  character  of  complainants'  business,  and  the 
trade-name  under  Avhich  it  was  being  carried  on;  and,  notwith- 
standing its  attention  has  since  been  called  to  the  injury  which 
it  has  done  to  complainants'  business,  it  refuses  to  desist  from 
the  use  of  the  name  so  wrongfully  used.  Held,  that  such  bill 
states  a  cause  of  action  for  unfair  competition,  and  these  facts 
being  admitted  by  demurrer,  they  are  sufficient  to  justify  relief 
by  injunction.  (C.  C,  S.  D.  Ohio  W.  D.  July  31,  1899.) 
Thompson,  J.]  ^  Block  et  al  v.  Standard  Distilling  &  Dis- 
tributing Co.,  95  Fed.  Rep.  978. 

21.  The  fact  that  complainants  were  doing  business  as  a  part- 
nership, under  the  name  "Standard  Distilling  Company"  is 
not  sufficient  to  warrant  the  assumption  as  a  fact  in  the  case 
that  the  complainants  thereby  intended  to  mislead  and  cheat 
the  public,  or  that  the  public  was  thereby  cheated  or  misled, 
neither  is  it  sufficient  to  warrant  the  assumption  that  they  rep- 
resented themselves  as  a  corporation,  by  using  such  name 
without  more  for  the  purpose  of  deceiving  the  public.     The 


TKADK    MARKS    AND    THADK    NAMKS.  -"iOl 

misrepresentation  whieh  would  justify  the  court  in  n-fusing 
relief  by  injunction  atiainst  unfair  competition  must  Ite  such  as 
is  intended  to  or  does  in  fact  mislead  or  cheat  the  public,  such 
as  operates  as  a  fraud  upon  the  i)ul)lic.  *A/. 

22.  Originally  the  name  "  Waltham "  was  used  in  a  geo- 
graphical sense,  but  by  continued  use  it  has  acquired  a 
secondary  meaning  as  a  designation  of  watches  of  a  particular 
class,  and  purchasers  have  come  to  understand  that  watches 
stamped  with  the  name  "  Waltham"  are  watches  made  by  the 
American  Waltham  Watch  Co.,  and  the  use  of  the  word  by 
another  company  upon  the  plates  of  its  watches  without  some 
accompanying  statement  which  shall  clearly  distinguish  its 
watches  from  those  manufactured  by  the  American  Waltham 
Watch  Co.  constitutes  unfair  competition,  and  will  he  enjoined. 
(C.  C,  S.  D.  X.  Y.     July  28,  1899.) 

TowNSEND,  J.]     *  American  Waltham  Watch  Co.  r.  Sandman, 
96  Fed.  Rep.  330. 

XXIII.  Use  and  Sale  as  Establishing  Title. 

Propert}'  in  a  trade-mark  arising  from  its  use  in  connection  or 
association  with  articles  manufactured  Ijy  a  certain  party  natu- 
rally excludes  every  other  person  from  the  right  to  use  the  same 
mark  upon  the  same  articles.  (Collins  Co.  v.  Cohen,  3  K.  &  J., 
428;  ex  parte  Langdon  and  Batcheller,  61  0.  G.  286,  cited.) 
(Feb.  3,  1899.) 

DuELL,  C]      Ex  parte  The  Anti-Adulteration  League,  86  0.  G. 
1803. 

XXIV.  What  Does  Not  Constitute. 

Where  a  system  of  using  letters  and  numerals  upon  the  parts 
or  pieces  composing  a  machine,  was  originally  adopted  and  used 
with  no  other  purpose  than  to  conveniently  designate  the  size, 
shape  and  capacity  of  the  article,  and  to  distinguish  it  from 
other  parts,  sizes,  shapes  and  adaptability,  and  with  no  inten- 
tion to  thereby  indicate  its  origin  or  manufacture,  no  trade-mark 
right  is  acquired.  Such  mark  or  symbol  must  be  designed,  as 
its  primary  object  and  purpose,  to  distinguish  each  of  the  arti- 
cles to  which  it  is  affixed  from  like  articles  produced  by  others, 
i.    e.,   to  point  out  distinctly  the  origin  or  ownership  of  the 


302  tka.de  marks  and  trade  names. 

article  to  which   it  is  affixed.     (C.   C.   A.,  6th  Cir.     Dec.  19 
1898.) 

LuRTON,J.]     ^i^Deering  Harvester  Co.   v.  Whitman  &  Barnes, 
Mfg.  Co.,  91  Fed.  Rep.  876. 


TABLE  OF  CASES. 


A 

Acme  Flexible  Clasp  Co.  v.  Carey  Mfg.  Co. 12,  108,  231 

Adams  &  Westlake  Co.  v.  E.  T.  Burrowes  Co 207,  217,  226 

Adams  &  Westlake  Co.— E.  T.  Burrowes  Co.  v ...     92 

A.  Featherstone  &  Co.,  eo;  jjttrte 291 

Aglav— Pickles  I'.     ...  71,156 

Aikin-Huber  v 148,  152,  171 

Ainsworth-McBride  i- 4,  8:5,  208,  251 

Alaska  Packers'  Ass'n  v.  Pacific  Steam  Whaling  Co.    .   .  122,  227,  260 

Allderdice— Crocker  v 129,  137,  140 

Allen  B.  Wrisley  Co.  v.  Geo.  E.  House  Soap  Co 287 

Allen— City  of  Boston  u.  .   .  69,84,114,184,212 

Allen — Societe  Anonyme  du  Filtre  Chamberlaud  Systeme  Pas- 
teur V 74, 119 

Alpha  Portland  Cement  Co. — Huntington  Dry  Pulverizer  Co.  v.  ■    122 

American  Box  Mach.  Co.  v.  Hughes 84,  233 

American  Fastener  Co.— Consolidated  Fastener  Co.  v.     .  120,  122,  125 

American  Graphophone  Co.  v.  Hawthorne  et  al 115 

AmericanGraphophone  Co.  v.  Nat'l  Gramophone  Co.    .   .  86,  118,  222 

American  Kheostat  Co. — Western  Electric  Co.  v 10,111,223 

American  Skewer  Co.  f.  Helms 224 

American  Soda  Fountain  Co. — Waldo  v 185 

American  Waltham  Watch  Co.  v.  Sandman  300 

Anchor  Electric  Co.— Hart  &  Hegeman  Mfg.  Co.  v.  86,  93, 117,  219,  226 

Ancora  I'.  Keiper  .  , 131,154 

Anderson  &  Dyer  v.  Lowry     177 

Anderson— King  V 111,196,221 

Anti-Adulteration  League,  fj-parie 289,301 

Antisdel  v.  Chicago  Hotel  Cabinet  Co 93 

Antisdel— Foster  v.     .   .   .  72,  161 

Apollo  Incandescent  Gaslight  Co.— Welsbach  Light  Co.  v. 

90,  122,  219,  231 

Arlington  Mfg.  Co.  ?;.  Celluloid  Co 91,198,250 

Armstrong — Dickerson  v .    126 

Arnold— Deere  V 111,204,225,230 

Ashley  et  a?.— Carter-Crume  Co.  v 92 

Ashton  Yalve  Co.— Crosby  Steam  Gage  &  Valve  Co.  v.  .   .  89,  202,  247 

(  303  ) 


304  TABLE   OF   CASES. 

Assyrian  Asphalt  Co.— United  States  Repair  &  Guaranty  Co.  v.  231, 248 
Atliol  &  Orange  St,  Ry.  Co.— Thomson-Houston  Electric  Co.  v.  75,239 

Athol  Mach.  Co.— Starrett  v 240 

Atlas  Glass  Co.— United  States  Glass  Co.  r 73,110,238 

Atwater  v.  Castner 93 

Augustus  Craft  Co.— Sarraziji  v 79 

Austin— Winslow  v 72,  1-57,  170 

Averell,  exjXM-<e 29,33,35,54,198 

Avery— Poole  v 178 

Aveyard— Sanford  Mills  v 169 

B 

Bader  v.  Vajen 72,  133,  152,  162.  170 

Badische  Anilin  &  Soda  Fabrik  v.  Kalle    .    .  8,  15,  94,  95,  188,  195,  228 

Badische  Anilin  &  Soda  Fabrik  v.  Matheson 121 

Baker— Nat'l  Biscuit  Co.  i; 284 

Baldwin  Cycle-Chain  Co.— Ewart  Mfg.  Co.  v 109,  186,  203 

Ball  &  Socket  Fastener  Co.  v.  Cohn 102 

Ball  &  Socket  Fastener  Co.  v.  C,  A.  Edgarton  Mfg.  Co.     .   .   .82,  240 

Barnhart  Bros.  &  Spindler,  ex  parte 252 

Barratt  v.  Duell,  Com.  of  Patents 72,  254 

Bass,  Katcliff  &  Gretton  i".  Christian  Feigenspan 284,  285 

Bass  V.  Henry  Zeltner  Brewing  Co 81 

Batcheller  v.  Thomson 87,  273,  290 

Batcheller— Tliomson  r 87,  273,  290 

Bates  V.  Johnson 56 

Beach  v.  Hobbs 59,  86,  105,  218,  224 

Beach— Hobbsv 59,86,105,218,224 

Beacon  Lamp  Co. — Westinghouse  Electric  &  Mfg.  Co.  v.  ■  12,  193,  230 

Bechmau  i".  Wood 128, 157,  158,  180,  192 

Bedford  u.  Duell,  Com.  of  Patents 10,72 

Bennett  v.  Carr  .   .   .  66,  90 

Bent— Kenney  v 83,  243,  251 

Bentley — Burton  v 17 

Bernard  Co.  (E.  G.)— Edison  Electric  Light  Co.  i' '■   ■    267 

Bernardin  (U.  S.  ex  rel.)  v.  Duell,  Com.  of  Patents 176, 178 

Betz,  ex  parte 258 

Binghampton,  City  of— Pelzer  v 90, 116, 184 

Bishop— Lyons  v 202,  247 

Blackniore.  ex  parte 35 

Blakey  v.  Nat'l  Mfg.  Co 80,  123 

Block  r.  Standard  Distilling  &  Distributing  Co 102,  181,  300 

Bloom-Maier  u 1,188,247 

Bloomingdale— Joseph  Bannigan  Rubber  Co.  r 287 

Blum  V.  Kerngood 235 

Boucher,  ex  parte 39 


TABLE   OF   CASES.  305 

3ouie]\,  ex  jjarte 4."i 

Bowers  v.  San  Francisco  Bridge  Co 7,  10,  'J4,  'Z22 

Bowsky— Cimiotti  Unhairing  Co.  t' 11.;.  21U,  230,  247 

Bradford  Belting  Co. — Kisinger-Ison  Co.  r iS3,  01,  233.  2ol 

Bradley— Hundley  v 25,  1G8 

Braggery,  lihind 137.  170 

Braintree  &  W.  St.  Ry.  Co. — Ilawley  Fnrnace  Co.  c 240 

Brattleboro  Overall  Co.— Corser  i; 190,101,200,220,246 

Bresnahan— Trip  Giant  Leveller  Co.  v 204,  225 

Breul  V.  Smith 133 

Bridgeport  Mfg.  Co.  v.  Wm.  Scliollhorn  Co 75,  223 

Briggs  V.  Diiell,  Com.  of  Patents 58,  79,  200 

JJrill  V.  St.  Louis  Car  Co 73,  214,  216,  233,  242 

Brill— Uebelacker  ^) 130,131,132,150 

Bron.son  Co.,  ea;2)arte 280,288,292 

Brown  v.  Hoopes  .  .  53 

Brown — X utter  v 240 

Brown  (J.  E.)  Mfg.  Co.— Palmer  « 87,174,226 

Brown— Eeed  Mfg.  Co.  t) 93 

Brown— Traver  v 72,  160 

Buell— Grinnell  « 131,149 

Buffalo-Pitts  Co.,  ex  parie 283,203 

Bugg— Paget  V 146 

~Bn\\\ei\  ex  jjurte 55 

Bullier  v.  Willson 135 

Bullock  Electric  Co.— Thomson-Hou.ston  Electric  Co.  v 122 

Bundy  Mfg.  Co.  v.  Detroit  Time  Register  Co.  .  89, 106, 113, 215, 228,  236 

Burke,  ex  parte ...      85 

Burrell  v.  Elgin  Creamery  Co 108,  248 

Burrowes,  E.  T.,  Co.  1-.  Adams  &  "Westlake  Co 02 

Burrowes,  E.  T.,  Co. — Adams  &  Westlake  Co.  f 207,217,226 

Burson,  ex  parte 218 

Burton  v.  Bentley 17 

Bushnell  (X.  T.)  Co.— Thompson* 81,100,118,231 

Butler,  ex  parte 279 

Buzzell— Reynolds  « 82,211,2.32 

c 

C.  A.  Edgarton  Mfg.  Co.— Ball  &  Socket  Fastener  Co.  v.  ...  82,  240 

C.  &  A.  Potts  &  Co.  tJ.  Creager 82,90,107,110,233,250 

Cain  V.  Park 71,  164,  175 

California  Fig  iSyrup  Co.  t'.  AVorden 299 

C-A\m,  ex  parte 128,131,141 

Calm  t).  Schweinitz  r.  Dolley  r.  Giesler 135,140 

Cambria  Iron  Co.  V.  Carnegie  Steel  Co.  Lim 90,101,241 

20 


306  TABLE   OF   CASES. 

Campbell  Printing-Press  &  Mfg.  Co. — Miehle  Printing-Press  & 

Mfg.  Co.  ® 231,  237 

Carleton,  ex  parte 17 

Carmicliael  v.  Smith— Sadtler  v 135, 144,  152 

Carnegie  Steel  Co,  Lim.— Cambria  Iron  Co.  v 90, 101,  241 

Carnegie  Steel  Co.  Lim.  v.  United  States  Mitis  Co 74 

Carr— Bennett  v 66,  90 

Carr,  ex  parte 18 

Carroll,  exx^arte 22 

Carter-Crume  Co.  d.  Ashley -   .   •_ 92 

Cary  Mfg.  Co.— Acme  Flexible  Clasp  Co.  'v 12, 108,  231 

Cary  Mfg.  Co.  v.  Neal 7,  243 

Casey— Warren  v 78,  88,  235,  244 

Castner — Atwater  v 93 

Cathrae,  ex  parte 43,  51 

Catskill  Illuminating  &  Power  Co.— Westinghouse  Electric  & 

Mfg.  Co.  r 229 

Celluloid  Co.— Arlington  Mfg.  Co.  ® ltl,]98,  250 

Centaur  Co.  v.  Hughes  Bros.  Mfg.  Co 85,  296 

Centaur  Co.  v.  Neathery 85,  296 

Centaur  Co.  v.  Reinecke 86 

Centaur  Co.  ».  Robinson •.    .    .    .271,292,295 

Centaur  Co.  v.  Marshall 290 

Chace,  ex  parte 42 

Chambers  Bros.— Pentield  v 77,  87,  112,  197,  206,  226,  234,  245 

Chandler  Adjustable  Chair  &  Desk  Co.  ■».  Ileywood  Bros.  & 

Wakefield  Co • 96,  222 

Chandler  Adjustable  Chair  &  Desk  Co.  v.  Town  of  Windham  .   .    242 
Chandler— Coburn  Trolley-Track  Mfg.  Co.  «.    .   .  83, 189,  212,  242,  244 

Chapman— Thomas  v 147 

Chatillon  v.  Porschner 249 

Chemical  Building  Co.— Kew  York  Filter  Co.  ?) 120,227 

Chester  Park  Athletic  Club  Co. — Noonan  v 19 

Chicago  Hotel  Cabinet  Co. — Antisdel» 93 

Christy  v.  Hygeia  Pneumatic  Bicycle  Saddle  Co.  .   .   .  78,  191,  192,  246 

Christian  Feigenspan— Bass,  Batcliff:  &  Gretton  v 284,  285 

Cimiotti  Unhairing  Co.  v.  BoAvsky 113,  212.  230,  247 

Citizens'  Telephone  Co. — Western  Electric  Co.  v 92 

City  of  Binghamton— Pelzer  « 90,  116, 184 

City  of  Boston  v.  Allen .' 69,  84, 114,  184,  212 

City  of  Chicago— Ross  w ^ 58,244 

City  of  Detroit — Von  Emperger  v 91 

Clausen,  ex  parte 29,32 

Cleveland  Block  Co.— Ilartz  ?; 61,89,103 

Cleveland  Target  Co.  v.  Empire  Target  Co 232,  241 

Coburn  Trolley-Track  Mfg.  Co.  v.  Chandler  ...  83,  189,  212,  242,  244 
Cochran,  ex  parte 201 


TABLE   OF   CASES.  307 

Cohn— Ball  &  Socket  Fastener  Co.  v 102 

Colliery  Engineer  Co.  v.  United  Correspondence  Schools  Co.  .   .  U5,  Gli 
Colnnibia   Pneumatic  AVagon  Wheel  Co.— "Rubber  Tire  Wheel 

Co.  I- 1!I2,  lt>3,  224 

Computing  Scale  Co. — Iloyt  v ISO 

Consolidated  Fastener  Co.  v.  American  Fastener  Co.    .    .  120,  122,  125 

Consolidated  Fastener  Co.  I'.  Hays 113,230 

Consolidated  Fastener  Co.  v.  Lehr 233 

Consolidated  Fastener  Co.  t'.  Weisner  ei  oZ 121,233 

Continental  Fire  Assurance  Co.— Continental  Ins.  Co.  v.    .   .281,  28G 
Continental  Ins.  Co.  r.  Continental  Fire  Assurance  Co.  .   .   .281,286 

Corning  Brake  Shoe  Co.— Lappin  Brake  Shoe  Co.  v 207,  246 

Corser  V.  Brattleboro  Overall  Co IW,  191,  200,  226,  246 

Covert  V.  Travers  Bros.  Co 175,  240,  208 

Cramer  r.  Singer  Mfg.  Co 107 

Crane  Elevator  Co.— Overweight  Counterbalance  Elevator  Co.  v.   104 

Creager— C.  &  A.  Potts  &  Co.  v 82,  90,  107,  110,  233,  250 

Creamery  Package  Mfg.  Co.— Thatcher  Mfg.  Co.  v 75,  239 

Crocker  v.  Allderdice 129,  137,  140 

Crocker  Chair  Co. — Indiana  Novelty  Co.  v 13,  242 

Crompton  Loom  Wks. — McColl  ;> 81,237 

Crosby  Steam  Gage  t^  Valve  Co.  v.  Ashton  Valve  Co.    .   .  89,  202,  247 

Cross  V.  Phillips 72,  154 

Cruikshanks  Bros.  Co.— A'an  Camp  Packing  Co.  v 73,  294 

Curnen— Palmer  v 78,  246 

CushmanPaper  Box  Mac)).  Co.  y.  Goddard  .   .    .80,107,175,237,239 


D 

Dadirrian  r.  Yacuhian 281 

Daniel,  ex  parte 42,  44 

Davey  Pegging  Mach.  Co.  v.  Isaac  Prouty  &  Co 249 

Davis  V.  Forsyth  &  Forsyth 164 

Davis— Whittaker  v 105 

Dayton  Paper-lSTovelty  Co. — National  Folding-Box  &  Paper  Co.  v. 

70,71,104 

De  Clyne— Richmond  Mica  Co.  V 62,121 

Decker— Marvel  v.  .   ., 71, 164 

Deere  1^.  Arnold f 111,204,225,230 

Deering  Harvester  Co.  *'.  AVliitman  &  Barnes  Mfg.  Co 75,  302 

Dempsey  v.  Wood • 130 

Dennison  Mfg.  Co.  v.  Thomas  Mfg.  Co 102,  274,  278,  299 

Des  Moines  Scale  &  Mfg.  Co.— E.  T.  Fairbanks  &  Co.  v 286 

Detroit  Time  Register  Co.— Bundy  Mfg.  Co.  v.  89, 106, 113,  215,  228, 236 

Dexter — Trevette  '• 

De  Wallace  v.  Scott 72,  166 


308  TABLE    OF   CASES. 

De  Yongh— Palmer  » 116,209,238 

Dickerson  v.  Armstrong 126 

D.  M.  Osborne  &  Co.— Ricliartlson  v 78,  268 

Dodge— Fowler  v 72, 132, 146 

Dodger.  Fulton  Pulley  Co 87,235 

Doig  )'.  Morgan  Machine  Co 76,  124 

Dolan— Shaffer  t' 137 

Dole  V.  Kansas  City  Star  Co 65,  67 

Dolley  V.  Geisler — Calm  v.  Schweinitz  v 135,  140 

Domestic  Sewing  Mach.  Co. — Union  Writing  Mach.  Co.  v.     .  212,  236 

Donallan  v.  Tannage  Patent  Co 92 

Donalian-Tannage  Patent  Co.  ?^ 11,210,227 

Draper  v.  Skerrett 299 

Du  Bon-Rickard  v 107,  241 

Duell,  Com.  of  Patents— Barratt  v 72,  254 

Duell,  CJom.  of  Patents— Bedford  v 10,  72 

Duell,  Com.  of  Patents — Bernardin  v 176,  178 

Duell,  Com.  of  Patents— Briggs  v 58,  79,  200 

Duell,  Com.  of  Patents— Lo wry  i) 11,72 

Duell,  Com.  of  Patents— Marsdeii  v 6,  72 

Duell,  Com.  of  Patents— Mower  » 2,72,108 

Duell,  Com.  of  Patents— Nimmy  r 71,201 

Duell,  Com.  of  Patents— Smith  r 72,187,191,196,198 

Duell,  Com.  of  Patents— U.  S.  ex  rel.  Bernardin  v 176,  178 

Duff  Mfg.  Co.  V.  Kalamazoo  K.  R.  Velocipede  &  Car  Co.    .   .  125,  228 
Duff  Mfg.  Co.  V.  :N'orton     60,  124,  232,  250 

E 

Eagle  Pencil  Co.— Tower  i- 88.  114,  221,  235 

Earl— Graham  y 76,100,101,225,252,269 

Eastman  v.  Houston 136 

Eastman  v.  Houston — Edgecombe  v 148 

Eaton  &  Prince  Co. — Overweight  Counterbalance  Elevator  Co.  i'.  104 

Economy  Gas-Lamp  Co.— Magic  Light  Co.  « 91,106,215,241 

Edgarton  (C.  A.)  Mfg.  Co.— Ball  &  Socket  Fastener  Co.  v.  .   .  82,  240 

Edgecombe  v.  Eastman  v.  Houston 148 

Edison  v.  White 136 

Edison  Electric  Light  Co.  v.  E.  G.  Bernard  Co 267 

Edison  Electric  Light  Co.  v.  Peninsular  Light,  Power  and  Heat 

Co 115,  185 

Edison  Electric  Illuminating  Co. — Morrin  v 19,  188,  205,  221 

E.  G.  Bernard  Co.— Edison  Electric  Light  Co.  i' 267 

E.  Ingraham  Co.  f.  E.  :N.  Welch  Mfg.  Co 77 

Eisner  &  Mendelsohn  Co. — Saxlehner  v 275 

Electric  Car  Co.  of  America  v.  jSTassau  Electric  R.  Co.  ...  7,  74,  222 
Elgin  Creamery  Co.— Burrell  v 108,  248 


TABLE    OF    CASES.  309 

Elgin  Nat'l  Watch  Co.— Illinois  Watch  Case  Co.  v.  S9,  282,  288,  292,  294 

Ellershau?en,  f.x  jjortc 34 

Elliott  V.  Harris 120 

Elliptical  Carbon  Co.  t).  Solar  Carbon  &  ^Slfg.  ('o 234 

Eluiira  Water  Wks.  Co.  v.  Xew  York  Filter  Mt>.  Co 93 

Ehvell— Rente  r 72,  134,  14S,  1G2,  2J6 

Empire  Target  Co.— Cleveland  Target  Co.  r 232,241 

E.  N.  Welch  AJfg.  Co. — E.  Ingraham  Co.  u 77 

Essex  V.  AVoods 139 

Estes  V.  Gause 259 

Esty  r.  Newton  .   .  , 71,133,163 

E.  T.  Burrows  v.  Adams  &  Westlake  Co 92 

E.  T.  Burrows— Adams  &  AVestlake  Co.  r 207,217,226 

E.  T.  Fairbanks  &  Co.  v.  Des  Moines  Scale  &  Mfg.  Co 286 

Evans— Rood  r 112,225 

Ewart  Mfg.  Co.  v.  Baldwin  Cycle-Chain  Co 109, 186,  203 

F 

Fairbanks  (E.  T.)  &  Co.  v.  Des  Moines  Scale  &  Mfg.  Co    ....    286 

Fairfax — Hutin  &  Leblanc  v 129 

Talk  Mfg.  Co.  V.  Missouri  R.  Co 199,  200,  243 

rargo(F.  B.)&  Co.— OwatonnaMfg.  Co.  « 228,270 

Farmer  Type-Founding  Co.— Nelson  v 80,  94,  188,  223,  229 

Farquhar,  ex  parte 38 

Fauche,  ex  parte 3 

Featherstone  &  Co. ,  ex  parte 291 

Feder  v.  Poyet       97,  98 

Fenton  Metallic  Mfg.  Co.— Office  Specialty  Mfg.  Co.  v.  91, 197,211, 251 
Yeucht,  ex  parte 38 

F.  G.  Stewart  Co.— Stuart  ® 84,291,297 

Fish  Bros.  Mfg.  Co.— Fish  Bros.  Wagon  Co.  v 255 

Fish  Bros.  Wagon  Co.  v.  Fish  Bros.  Mfg.  Co 255 

Flomerfelt  v.  Newwitter 81 

Foley  &  Co.,  ex  parte 276 

Forschner- Chatillon  v 249 

Forsyth  et  aL— Davis  v 164 

Foster  «.  Antisdel 72,161 

Fowler  r.  Dodge 72,  132,  146 

France,  ex  parte 30,  51 

Franck  r.  Frank  Chicory  Co 300 

Frank  Chicory  Co.— Franck  v 300 

Franklin  &  Tonnar,  ex  ^jarie 24,28 

Fray- Peck,  Stow  and  Wilcox  Co.  i" 87 

Freckleton— Streat  v 136,  160 

Fresno  Home  Packing  Co. — Fruit  Cleaning  Co.  v. 

57,  192,  212,  217,  228,  271 


310  TABLE    OF   CASES. 

Frick  Co. — Geiser  Mfg.  Co.  v -58 

Fruit  Cleaning  Co.  v.  Fresno  Home-Packing  Co. 

57,  192,  212,  217,  228,  271 

Fry  V.  Eookwood  Pottery  Co 10,107,199,242 

Fnlton  Pulley  Co.— Dodge  v 87,  235 

Furst— Kroppf  v 285,  298 


G 

Gair— Whitney  v 224 

Gaitley  v.  Greene 190,  245 

Gatlimanu  v.  Hurst 138 

Gause — Estes  v 259 

Geisler— Calm  ®.  Schweinitz  «.  Dolley  ® 135,140 

Geiser  Mfg.  Co.  v.  Frick  Co 58 

General  Electric  Co. — Westingliouse  Electric  &  Mfg.  Co.  v.  .   .   .     61 

Gen'l  Electric  Co.  v.  Rah  way  Electric  Light  &  Power  Co 232 

G.  F.  Heuhlein  &  Bro.,  e.x  parte 279 

Gibson — Whitney?; ■  .    . 154 

Geo.  E.  Rouse  Soap  Co.— Allen  B.  Wrisley  Co.  « 287 

Gies — Saxlehner  v 275 

Gimbel— Hogg  v 186,  248 

Gimbel— Shoe  v 193 

Ginna  1).  Mersereau  Mfg.  Co 77,203,234 

Globe  Refining  Co.— Proctor  &  Gamble  Co.  tJ 76,119,297 

Goddard—Cushman  Paper  Box  Mach.  Co.  ® 80,107,237 

Goddard — Cushmau  Paper  Box  Mach.  Co.  v 80,  175,  239 

Goodwin — Maxwell  v 64 

Gormully  «fc  .Jelfery  Mfg.  Co.  v.  Stanley  Cycle  Mfg.  Co. 

6,  209,  213,  220,  269 

Gorton  v.  Smith — Warner 153 

Graham  t;.  Earl     70,100,101,225.252,269 

Graham— Maitland  i- 60 

Grand  Rapids  School  Furniture  Co.,  ex  2JfH"<(' 277 

Greene— Gaitley  v 190,  245 

Greene— Heap  u 85,111,215,224 

Griffin  v.  Swenson 72.  166 

Grinnell  r.  Buell 131,149 

Groves,  ex  parte 95 

Guenther  Milling  Co.,  ex  pa7-ie 290 

Guinzburg— S.  Rauh  &  Co.  v 117,236 

H 

Haberman— Lalance  &  Grosjean  Mfg.  Co.  v 180,  266,  269 

Hake-Stirn  Co.— Loewenbach  v 77,  197,  245 


TABLE    OF   CASES.  .'51  1 

H;ilK<c  ll;ill,fxpm-«c 24,27 

Hallbuuer— Walsh  v 183,  150 

Hainbiag- American  Packet  Co. — Hohorst  « 09,71,75 

Ilaiiirick— Loeben  v 152,  15(5 

Ilance  Bros.  «fc  AVliite,  ex  parte  .   •   ■ 27!» 

H  and  ley  ®.  Bradley 25,  KiK 

Hanifen  i\  Liipton 188 

Hanifen  v.  Price 13,  231 

IhxnVie^  ex  parte 259 

Harkness  v.  Strohni 151 

Harris— Elliott  ® 120 

Hart  &  liegeman  Mfg.  Co.  v.  Anchor  Electric  Co.  .  86, 93, 117, 219, 226 

Hartz  ®.  Cleveland  Block  Co 61,89,103 

Hathorn  Mfg.  Co. — Simonds  Rolling  Mach.  Co.  v. 

6,  9,  58,  88,  173,  205,  208,  210,  211,  216,  220,  227,  270 
Hathorn  Mfg.  Co.  v.  Simonds  Rolling  Mach.  Co.  .   .    .  88,  210,  227,  270 

Hauss— Jobes  v.  Roberts  v 167 

Hawley  Furnace  Co.  ®.  Braintree  &  W.  St.  Ry.  Co 240 

Hawthorne— American  Graphophone  Co.  v 115 

Hay  &  Todd  Mfg.  Co.  v.  Querns  Bros 286 

Hays— Consolidated  Fastener  Co.  v 113,  230 

Heap  «.  Greene 85,111,215,224 

Hearst— McDonald  v 66 

Heller— Stokes  Bros.  Mfg.  Co.  v 200,  237,  248 

Helms — American  Skewer  Co.  v 224 

Hendrickson — Silverman  « 141,153 

Henkle— Morss  v 140,  145 

Henry  Zeltner  Brewing  Co. — Bass  v 81 

Herzog,  ex  j:*arte 22,258 

Hetherington— Kasson  v 165,  167 

Heublein  &  Bro.,  fx  jjorte 279 

Hensch,  exp«i"ie 49 

Hewitson,  ex  parte 98 

Heywood  Bros.  &  Wakefield  Co.— Chandler  Adjustable  Chair  & 

Desk  Co 96,  222 

Hey— Howard  v 140,  145,  146 

Hibbard,  ex  parte 

Hinkle  &  Ashmore,  ex  parte 54 

Hirsh— Rose  v 69,  70 

Hobbsi'.  Beach     59,86,105,218 

Hobbs— Beach  v 59,  86,  105,  218 

Hodges— Weikly  v 149 

Hoertel  v.  Raphael  Tuck  &  Sons'  Co ......     63 

Hoffman— Wm.  IMann  Co.  « 249 

Hogg  I'.  Gimbel    .   .  186 

Hohorst  «.  Hamburg-American  Packet  Co 69,71,75 

Holl is,  ex  pa?tc 29,30,53 


312  TABLE    OF   CASES. 

Holmes  «.  Hurst 67 

Hoopes — Brown  « 54 

Horn  &  Brannen  Mfg.  Co.  v.  Pelzer 59,  85,  220,  244 

Houston  V.  Eastman 136 

Houston — Edgecombe  v.  Eastman  « 148 

Houston,  Meeks&  Co. — Igleheart  Bros,  w 169,171 

Howard®.  Hey ' 140,145,146 

Howell  V.  Miller 62,  63,  65,  74 

Iloyt  V.  Computing  Scale  Co 186 

Huber  v.  Aiken 148,  152,  171 

Hughes — American  Box-Macli.  Co.  v 84,  233 

Hughes  Bros.  Mfg.  Co.— Centaur  Co.  iJ 85,296 

Hughes — Sagendorph  v 99,  247 

Hulett  V.  Long 72,  130,  157,  179 

Humber— Mesinger  Bicycle  Saddle  Co.  v 97 

Humphry — Kichardson  v 153,  170 

Hunter,  ex  parte 23,  45,  259 

Huntington  Dry  Pulverizer  Co.  v.  Alpha  Portland  Cement  Co.  .  122 
Huntington  Dry  Pulverizer  Co.  v.  Newell  Universal  Mill  Co.  223,  268 
Huntington  Dry  Pulverizer  Co.— Whitaker  Cement  Co.  v.    .   .  89,  236 

Hurst— Gathmann  v.      .       .   .       137 

Hurst— Holmes  v 67 

Hutin  &  Leblanc  v.  Fairfax 129 

Hygeia  Pneumatic  Bicycle  Saddle  Co.— Christy  v.   .     78,  191,  192,  246 


Igleheart  Bros.  v.  Houston,  Meeks  &  Co 169, 171 

Illinois  Watch  Case  Co.  v.  Elgin  Kat'l  Watch  Co  .  89, 282, 288,  292,  294 
Improved  Order  of  Red  Men's  Hall  Ass'n— Overweight  Counter- 
balance Elevator  Co.  ® 79,  109,  210,  213,  271 

Indiana  Novelty  Co.  v.  Crocker  Chair  Co 13,  242 

Indiana  Novelty  Co.  v.  Smith  Mfg.  Co 13,  242 

In  re  Lamson  Consolidated  Store  Service  Co 217 

hx  re  Nat'l  Phonograph  Co 52 

International  Tooth  Crow^n  Co.  v.  Kyle 232 

Irby  (W.  E.)  Cigar  &  Tobacco  Co.— Sarrazin  v 19,  78,  278,  293 

Isaac  Prouty  &  Co. — Davey  Pegging  Mach.  Co.  v 249 

Isenhart,  ex  parte 48 

J 

Jackson— New  York  Filter  Mfg.  Co.  ® 114,  124,  223,  267 

Jennings  v.  Eogers  Silver  Plate  Co 108 

Jensen— Norton  I) 73,114,203,206,214,238,253 

J.  L  Owens  Co.— Sperry  Mfg.  Co.  ® 250 


TABLE    OF   CASES.  318 

Jobes  f.  Roberts  V.  Haiiss ]()7 

John  E.  Brown  Mfg.  Co.— Palmer  r 87,174,1225 

Johnson— Bates  v 56 

Johnson,  ra  jjarie 15,  17,  49 

Johnson — Lovell  v 75,  23-4 

Johnson— Rulifson  v 248 

Jolmston  V.  Woodbury 249 

Joliet  Mfg.  Co. — Sandwich  Enterprise  Co.  v S5,  2;^4 

Jones  Special  Mach.  Co.— Pentucket  Variable  Stitching  Sewing 

Mach.  Co.  t' 227 

Joseph  Banigan  Rubber  Co.  v.  Bloomingdale ...    287 

J.  Stevens  Arms  &  Tool  Co.— Starrett  v 240,  268 

J.  W.   Reedy  Elevator  Mfg.   Co.— Overweight  Counterbahmce 

Elevator  Co.  «. 1U4 


K 

Kalamazoo  R.  R.  Velocipede  &  Car  Co.— Duff  Mfg.  Co.  v.  .   .  125,  228 
Kalle— Badische  Anilin  &  Soda  Fabrik  v.  .  .  8,  15,  94,  95,  188,  195,  228 

Kansas  City  Star  Co.— D'Ole  v 65,  67 

Kasson  v.  Hetherington 165, 167 

Keiper — Ancora  ?; 131,154 

Kellow,  ex  parte 48 

Kelly  V.  Springfield  Ry.  Co 77,  197,  285 

Kenney  v.  Bent 83,  243,  251 

Kerngood— Bhun  v 235 

King  ».  Anderson 111,196,221 

King  &  Badendreier  v.  Libby 142 

Kingman— McBride  v 4,  83,  208,  251 

Kisinger-Ison  Co.  «.  Bradford  Belting  Co 83,91,233,251 

Knight — Palmer  v 239 

Knowles  Looms  Wks.—McColl  t) 81,207,237 

Kokernot,  ex  parte 34 

Kroppf  V.  Furst 285,  29S 

Kyle— International  Tooth  Crown  Co.  v 232 


Lalance  &  Grosjean  Mfg.  Co.  v.  Haberman 180,  266,  269 

Lalance  &  Grosjean  Mfg.  Co.  v.  Matthai 180.  266,  269 

Langen,  ex  parte 55 

Lamson  Consolidated  Store  Service  Co.  in  re 217 

Laperle  &  Boulard,  ex  parte 45 

Lappin  Brake  Shoe  Co.  v.  Corning  Brake  Shoe  Co 207,  246 


314  TABLE    OF    CASES. 

La  Republique  FrauQaise  v.  ISchultz 268,  282,  298 

Larkin— Michaelis  v 214,  234 

Larson,  ex  parte 23 

Lawler-Morrin  v 19,  IBS,  205,  221 

Lawrence  &  Kennedy — Shiels  t' 141,146,150,168 

Lawton,  ex  parte      16 

LeFebvre,  ex  parte 43 

Lehr — Consolidated  Fastener  Co.  v 233 

Leicester  Mills— Powell  v 94 

Leland— Nat'l  Cash  Eegister  Co.  r 88,112,266 

Leslie — I'racy  v 72,  163 

Lettelier  ?).  Mann 14,190,193,204,244 

Libby — King  &  Badendreier  v, 142 

Lilly,  ex  parte 42 

Loeben  ®.  Hamrick 152,  156 

Loewenbach  o.  Hake-Stirn  Co., 77,  197,  245 

Long— Ilulett  « 72,  130,  157,  179 

Loomis-Manning  Filter  Co. — Xew  York  Filter  Mfg.  Co.  v. 

123,  223,  267 

Lorenz,  ex  parte ;   .    . 277 

Louden  Macli,  Co.  v.  Montgomery  Ward  &  Co 102 

Lovell  V.  Johnson 75,  234 

Lowry — Anderson  &  Dyer  « 177 

Lowry  r.  Duell,  Com.  of  Patents 11,72 

Lozier— Palmer  Pneumatic  Tire  Co.  v 84,  173,  174,  243 

Lxiptou — Hanifen  v. 183 

Lyons  i;.  Bishop      ■.    .    .   .202,247 


M 

Magic  Light  Co.  i'.  Economy  Gas-Lamp  Co 91,106,215,241 

Maier«.  Bloom 1,188,247 

Maitland  v.  Graham 60 

Manitowoc  Pea-Packing  Co.  v.  Wm.  Mumsen  &  Sons     ....  78,  297 

Mann— Lettelier  v.   .       . 14,  190,  193,  204,  244 

Marnell— Moore  v 226 

Marquet — Saxlehner  v ...    275 

Marsden  v.  Duell,  Com.  of  Patents 6,  72 

Marsh ,  ex  parte 50 

Marsliall— Centaur  Co.  v 290 

Martin,  ex  parte 277 

Marvel  v.  Decker     71 ,  164 

Matheson— Badische  Anilin  &  Soda  Fabrik  v 121 

Matthai— Lalance  &  Grosjean  Mfg.  Co 180,  266,  269 

Mawhinney  Last  Co.— Miller  tj 212,240 

Maxwell  v.  Goodwin .     64 


TABLE   OF   CASES.  315 

Maxwell— Smith  » 2(i],:24G 

MeBride  r.  Ainsworth 4,  s:},  :2(i8,  251 

McBriile  v.  Kiiigiiian 4,  Jv>,  208.  261 

McBritle  v.  Eandall 4.  .s;^,  208,  251 

McBride  v.  Sickels    '. 4,  S'i,  2(i8,  251 

McClarin— Way  « 82.18(1.244,249 

McColl  V.  Crompton  Loom  Wks 81 ,  237 

McColl  r.  Knowles  Loom  Wks 81,207,237 

McCoimick  Harvesting  Macli.  Co. — Wilson  v 7(),  20(),  239 

McConwaj^  &  Torley  Co.  v.  Shickle,  Harrison  &  Ho  ward   Iron 

Co.  .    .  '. 8,  225 

^McDonald  v.  Hearst 66 

McEwan  Bros.  Co.  ®.  McEwan 118,188,192,224 

McEwan— McEwan  Bros.  Co.  t' 118,188,102.224 

McFassell— Thomas  Roberts  Stevenson  Co.  t' 84,191,221 

McLoughlin  Bros.,  e.r  pa7'fe 181 

McNeely  «.  Williames .    .   .9,60,90.101,232 

McNeeley— Williames  I- 9,60,90,101,232 

McPhiiil,  in  re 32 

McPhail— Reiner  I' 128 

McTammany  v.  Paillard   .   .   .    .< 238 

Melvin  I'.  Thomas  Potter,  Sons  &  Co 194.213,222 

Meriden  Britannia  Co. — Smitli  v 120 

Mevrell,  ex  parte  .   .  .  21 

Merritt— New  Jersey  Wire  Cloth  Co.  v .    248 

Merrow  Mach.  Co. — Willcox  &  Gibbs  Sewing  Mach.  Co.  v.  .   .  93,  226 

Merserean  Mfg.  Co. — Ginna  » 77,234 

Mesinger  Bicycle  Saddle  Co.  v.  Humber 97 

Michigan  Alkali  Co. — Solvay  Process  Co.  « 73.199,243 

Michaelis  «.  Larkin " 214,234 

Miehle  Pointing- Press  &  Mfg.  Co.  v.  Campbell  Print ing-Pre.ss  & 

Mfg.  Co 231 ,  237 

Miehle  v.  Reed 1-56 

Miller  Down-Draught  Furnace  Co. — Springfield  Furnace  Co.  v.  .  9.  249 

Miller  ».  Mawhinney  Last  Co 212,240 

Miller— Howell  v 62,  63,  65,  74 

Millheim  Electric  Tel.  Co.  v.  Western  Electric  Co 80,  204 

Missouri  R.  Co.— Falk  Mfg.  Co.  » 199.  200,  243 

Montgomery  Ward  &  Co. — Louden  Mach.  Co.  v 102 

Moore  v.  Marnell 226 

Morgan  Machine  Co.— Doig  v 76,  124 

Morrin  B.  Edisonllluminating  Co 19,188,205,221 

Morrin  «.  Lawler 19,188,205,221 

Morris— Schrei  tj 70,201,245 

Morss  V.  Henkle 140,  145 

Moses  S.  Okun,  in  re 218 

Mower  v.  Duell,  C^m'r  of  i'atents 2,  72, 108 


316  TABLE    OF   CASES. 

Muir,  ex  parte 276 

isr 

Nassau  Electric  E.  Co. — Electric  Car  Co.  v 7,74,222 

Nassau  Electric  Ej\  Co.  v.  Sprague  Electric  Ry.  &  Motor  Co.  .   .    126 
Nassau  Electric  Ry.  Co. — Sprague  Electric  Ry.  &  Motor  Co.  v. 

80,  123,  224 

Nat'l  Biscuit  Co.  v.  Baker ^284 

Nat'l  Cash  Register  Co.  v.  Leland 88, 112,  266,  272 

Nat'l  Cash  Register  Co.  v.  Wright 88, 112,  266,  272 

Nat'l  Foldiug  Box  &  Paper  Co.  v.  Dayton  Paper  Novelty  Co.  70, 71 ,  104 
Nat'l  Gramophone  Co. — American  Graphophone  Co.  v.  .   .  86, 118,  222 

Nat'l  Mfg.  Co.— Blakey  v 80, 123 

Nat'l  Phonograph  Co.,  in  re 52 

Nat'l  Tooth  Co.— Standard  Dental  Mfg.  Co.  u 181,183 

Nave  &  McCord  Mercantile  Co.,  e.Tj9«rie 282 

Neal— Cary  Mfg.  Co.  v 7,  243 

Neathery— Centaur  Co.  u 85,296 

Neilsen— Saxlehner  v 86 

Nelson  v.  Farmer  Type-Founding  Co 80,  94, 188,  223,  229 

Newark  Spring  Mattress  Co.— Ryan  v 12, 114,  213,  230 

Newell  Universal  Mill  Co. — Huntington  Dry-Pulverizer  Co.  v. 

223, 268 

Newhall — Pelzer  v 59 

New  Jersey  Wire-Cloth  Co.  v.  Merritt 248 

Newton— Esty  u 71.133,163 

Newton  Mfg.  Co. -y.  Wilgus 221,253 

Newton  «.  Woodward 132, 143 

New  York  Air-Brake  Co.— Westinghouse  Air-Brake  Co.  v.  .   .  82,  237 
New  York  Chemical  Refining  Co.— Welsbach  Light  Co.  ■»....    117 

New  York  Filter  Co.  ».  Chemical  Bldg.  Co 120,  227 

New  York  Filter  Mfg.  Co.— Elmira  Water  Wks.  Co.  v 98 

New  York  Filter  Mfg.  Co.  v.  Jackson 114, 124,  223,  267 

New  York  Filter  Mfg.  Co.  v.  Loomis-Manning  Filter  Co. 

123,  223,  267 

Newwitter— Flomerfelt  v 81 

Nickerson — Richards  v 147 

Nimmy  17.  Com 'r  of  Patents 71,201 

Noonan  v.  Chester  Park  Athletic  Club  Co 19 

Norton-Duf£  Mfg.  Co.  t; 60,  124,  232,  250 

Norton  v.  Jensen 73,  114,  203,  206,  214,  238,  253 

Noyes,  ex  parte 26 

Noyes— Perry  v 104, 184 

N.  T.  Bushnell  Co.— Thompson  I' 81,100,118,231 

Nutter  V.  Brown 240 


TABLE    OF   CASES.  .'517 

o 

O'Brien— Tubular  Rivet  cV:  Stud  Co.  I- Ill',  115 

O'Connor,  ex  parte .31 

Office  Specialty  Co.  i;.  Fenton  Metallic  Mfg.  Co.  .   .   .  !)1,  197,  211,  ii.51 

Ogle— Williams  v 72,  134 

Okun,  in  re 218 

Osborne  (D.  M.)  &  Co.— Richardson  ;• 78,  2G8 

Osborne,  tx  parte 41 

Overweight  Counterbalance  Elevator  Co.  v.  Crane  Elevator  Co.  .  104 
Overweight  Connterl)alance  Elevator  Co.  c  Eaton  iV  Prince  Co.  .  104 
Overweight  Counterbalance  Elevator  Co.  v.  Improved  (3rder  of 

Red  Men's  Hall  Ass'n 79,  109,  210,  2K5,  271 

Overweight  Counterbalance  Elevator  Co.  r.  ,T.  W.  Reedy  Elevatt)r 

Mfg.  Co 104 

Overweight  Counterbalance  Elevator  Co.  v.  Standard  Elevator  & 

Mfg.  Co 104 

Owatonna  Mfg.  Co.  r.  F.  B.  Fargo  &  Co 228,  270 

Owens  (J.  L.)  Co. — Sperry  Mfg.  Co.  i" 250 

Oxnard  &  Baur,  ex  parte 40 

P 

Pacific  Steam  Whaling  Co.— Alaska  Packers' Ass'n  i\  .   .  122,  227,  2G0 

Paget  r.  Bugg 146 

Paillard— McTamman>  r 238 

Palmer  i-  Curnen 78,  24H 

Palmer  y.  DeYongh 110,209,237 

Palmer  v.  .John  E.  Brown  Mfg.  Co 87,  174,  225 

Palmer  r.  Knight 239 

Palmer  Pneumatic  Tire  Co.  r,  Lozier 84,173,174,243 

Park  -  Cain  r .   .71,164,175 

Parsons  w.  Seelye .   .190,201,216,246 

Patent  Button  Co.  v.  Pilcher 103,  205,  240 

Patent  Button  Co.  v.  Scovill  Mfg.  Co 7,  245 

Patrick,  ex  jjavie 38,40 

Peck,  Stow  &  AYilcox  Co.  v.  Fray     87 

Pelzer  *-.  City  of  Binghampton 90,110,184 

Pelzer  v.  Xewhall 59 

Pelzer— Horn  &  Brannen  Mfg.  Co.  v 59,  85,  220,  il4 

Penfield  r.  Chambers  Bros 77,  87,  112.  197,  206,  226,  234,  245 

Peninsular  Light,  Power  cS:   Heat  Co.— Edison  Electric  Light 

Co.  f 115,  185 

Penner,  expa7'ie 27 

Pennsylvania  Steel  Co.  r.  Vermilya 73,221 

J'entucket  Variable  Stitching  Sewing  Mach.  Co.  v.  Jones  Special 

Mach.  Co 227 

Perkins,  ex  jjctrie 17,46,47,187 


318  TABLE    OF   CASES. 

Perl— Williams  v 138 

Peilinsky,  fxj?a?'ie 34 

Perry  v.  Noyes 104. 184 

Person,  ex  jjarte 42 

Philadelpliia  &  R.  R.  Co.— Union  Switch  &  Signal  Co.  v.  .  82,  241,  250 

Phillips— Cross  v 72,  154 

Pickles  «.  Aglar 7],15G 

Pilcher— Patent  Button  Co.  e 103,  205,  240 

Poole  V.  Avery 178 

Potter,  Sons  &  Co.— Melvin  v 194.  213,  222 

PottsCo.  (C.  &  A.)  r.  Creager 82,90,107,110,233,250 

Powell  V.  Leicester  Mills 94 

Poyet— Feder  v 97,  98 

Preston — Sarrazin  v 79 

Price— Hanifen  v 13.  231 

Pridmore,  ex  parte 189 

Proctor  cS:  Gamble  Co.  V.  Globe  Refining  Co 76,119,297 

Prouty  (Isaac)  &  Co.— Davey  Pegging  Mach.  Co,  v 249 

Q 

Querns  Bros.— Hay  iS:  Todd  Mfg.  Co.  « 286 

K 

Rah  way  Electric  Light  &  Power  Co. — Gen'l  Electric  Co.  v.  .   ,   .    232 
Rah  way  Electric  Light  «&  Power  Co. — Thomson-Houston  Electric 

Co.  V 11,247 

Randall— McBride  v 4,  83,  208,  251 

Raphael  Tuck  &  Sons  Co.— Hoertel  v 63 

Raphael  Tuck  &  Sons  Co. — Ross  w 18,63,74 

Rauh  &  Co.  (S.)  I'.  Guinzburg 117,236 

Reed  Mfg.  Co.  v.  Brown 93 

Reed— Miehle  v 156 

Reinecke— Centaur  Co.  v 86 

Reiner  v.  McPhail 128 

Rente  v.  Elwell 72,  134,  148,  162,  216 

Rex  Incandescent  Light  Co.— Welsbach  Light  Co.  v.  .  92, 123, 125,  229 

Reynolds  r.  Buzzell 82,211,232 

Rhind— Bragger  v 137,  170 

Richards  v.  Nickerson 147 

Richardson  v.  V.  M.  Osborne  &  Co 78,  268 

Richardson  v.  Humphry 153,  170 

Richmond  Mica  Co.  v.  DeClyne .  62,  121 

Rickard  v.  DuBon  ...  107,  241 

Risdon  Iron  &  Locomotive  Wks.  v.  Trent 112,  115,  206,  225 

Roberts  v.  Hauss— Jobes  v 167 


TABLE   OF   CASES.  319 

Robertson,  f.r  pftr^e 259 

Eobiiison — Centaur  Co.  c Ii71,292.  205 

Kogers  Mfg.  Co.  v.  Rogers si 

Rogers  Silver  Plate  Co.— Jennings  r lus 

Rogers— Wm.  Rogers  Mfg.  Co.  v 81 

Rogers  &  Winslow,  ex  parte 194 

Rookwood  Pottery  Co.— Fry  v 10.  107,  199,  242 

Rood  V.  Evans 112,225 

Rosback,  ex  parte 182,  218 

Roscliach  r.  Walker G,  KJl 

Rose  V.  Ilirsh GO,  70 

Ross  V.  City  of  Chicago 58,  244 

Ross  V.  Raphael  Tuck  &  Sons  Co 18,  08,  74 

Rouse,  ex  parte 37 

Rouse  Soap  Co.— Allen  B.  Wrisley  Co.  v 287 

Rubber  Tire  Wheel  co.  i'.  Columbia  Pneumatic  Wagon  Wheel  Co. 

192,  193,  224 

Rubens  v.  Wheatlield 88,  246 

Rulifson  V.  Johnson 248 

Runyau— Ryan  v 79,  235 

Ryan  v.  Newark  Spring  Mattress  Co 12,  114,  213,  230 

Ryan  v.  Runyon 79,  235 

Ryley,  ex  parie 15 

s 

Sadtler  v.  Carmichael  v.  Smith 135,  144,  152 

Sagendorph  i\  Hughes 99,247 

Sandman — American  Waltham  Watch  Co.  v 301 

Sandwich  Enterprise  Co.  v.  Joliet  Mfg.  Co.  .       85,  234 

Sanford  Mills  v.  Aveyard  169 

San  Francisco  Bridge  Co.— Bowers  v 7, 10,  94,  222 

Sargent  &  Co.— Yale  &  Towne  Mfg.  Co 194,  251 

Sarrazin  v.  Augustus  Craft  Co 79 

Sarra/in  v.  Preston 79 

Sarrazin  V.  W.  R.  Irby  Cigar  &  Tobacco  Co. 19,78,278,293 

Sattley,  ex  jja/rte 41 

Saxlehner  v.  Eisner  &  Mendelsohn  Co 275 

Saxlehner  v.  Gies 275 

Saxlehner  v.  Marquet 275 

Saxlehner  v.  Xeilsen 86 

Saxlehner  v.  Siegel-Cooper  Co 275 

Schollhorn  (William)  Co.— Bridgeport  Mfg.  Co.  r 75,  223 

Schrei  r.  Morris 70,201,245 

Schultz — La  Republique  Frangaise  I- 208,282,298 

Schweinitz  v.  Uolley  v.  Geisler — Calm  v 135, 140 


320  TABLE    OF   CASES. 

Scott,  ex  parte 5 

Scott— De  Wallace  v 72, 166 

Seovill  Mfg.  Co.— Patent  Button  Co.  v 7,  245 

Second  Avenue  Traction  Co. — Thompson  i' 88,10(3,117,227 

Seelye— Parsons  r 190,201,216,246 

Seyfang,  ex  %)arte 26 

Shaffer  v.  Dolan 137 

Shaw,  ea?jjarie 26 

Shaw,  Hammond  &  Carney,  e.cpa7-ie 282 

Sherman  &  Harms,  ex  parte 96,  99 

Shickle,  Harrison  &  Howard  Iron  Co. — McConway  «fc  Torley 

Co.  r 8,  225 

Shiels  r.  Lawrence  &  Kennedy 141,140,150,168 

Shoe  V.  Gimbel 193,  248 

Sickels— McBride  v 4,  83,  208,  251 

Siegel-Cooper  Co. — Saxlehner  v 275 

Silverman  L'.  Hendrickson 141,153 

Simonds  KoUing  Mach.  Co.  v.  Hathorn  Mfg.  Co. 

58,  88,  173,  205,  208,  210,  211,  216,  220,  227,  270 
Simonds  Rolling-Mach.  Co.— Hathorn  Mfg.  Co.  r  .  6,9,  88,210,227,270 

Singer  Mfg.  Co. — Cramer  v 107 

Skerrett— Draper  r 299 

Smith— Breul  v 133 

Smith  V.  Duell,  Com.  of  Patents 72, 187,  191,  196, 198 

Smith  r.  Maxwell 201,246 

Smith  Mfg.  Co.— Indiana  Novelty  Mfg.  Co.  r 13,  242 

Smith  I'.  Meriden  Britannia  Co 120 

Smith — Sadtler  r.  Carmichael  v 135,  144,  152 

Smith  u.  Ulrich     109,113,207,229 

Smith— Warner  v.  Gorton  v 153 

Societe  Anonyme   du    Filtre  Chamberland  System    Pasteur  v. 

Allen 74,  119 

Solar  Carbon  &  Mfg.  Co.— Elliptical  Carbon  Co.  v 231 

Solvay  Process  Co.  v.  Michigan  Alkali  Co 73,  199,  243 

Spalding— United  States  Playing  Card  Co.  « 126,  222,  269 

Spayd,  ex  parte 278 

Sperry  Mfg.  Co.  v.  J.  L.  Owens  Co 250 

Sprague  Electric  &  Motor  Co.— Nassau  Electric  Ry.  Co.  v.    .   .   .    126 
Sprague  Electric  Ry.  &  Motor  Co.  v.  Nassau  Electric  Ry.  Co. 

80,  123,  224 
Springfield  Furnace  Co.  v.  Miller  Down-Draught  Furnace  Co.  .  9,  249 

Springfield  Ry.  Co.— Kelly  v 77,  197,  235 

S.  Rauli  &  Co.  y.  Guinzburg 117,236 

Standard  Dental  Mfg.  Co.  v.  Nat'l  Tooth  Co 181,  183 

Standard  Distilling  &  Distributing  Co.— Block  i; 102,181,300 

Standard  Elevator  &  Mfg.  Co.— Overweight  Counterbalance  Ele- 
vator Co.  u 104 


TABLE    OF   CASES.  321 

Standard  Fashion  ('o.,  ex  parte 280 

Standard  Paving  Co.— United  States  Repair  cV:  Guaranty  Co.  v  .  S0,L'3(i 
Stanley  Cycle  Ufg.  Co.— Gormully  v.  Jeffery  Mfg.  Co.  r. 

(1,  2(ii>.  lii:;,  2l'().  iKiO 

Starrelt  v.  Alliol  Macli.  Co 240 

Starrett  r.  J.  Stevens  Arms  &  Tool  Co 240.  2()8 

Stebbins,  e.^;  ;)«r<e 2o,  47 

Stevens  Arms  &  Tool  Co.— Starrett  r 240,2(18 

Stevenson  Co.  r.  McFassell S4,  101,221 

Stewart  Co.,  F.  G.— Stuart  r 84,201,207 

St.  Louis  Car  Co.— Brill  v 73,  214,  2Ui,  238,  242 

Stokes  Bros.  Mfg.  Co.  r.  Heller 2U0,  237,  248 

Streat  v.  Freckleton 130,  100 

Strohm— Harkiiess  r 151 

Stuart  V.  F.  G.  Stewart  Co 84,201,297 

Stuhmer,  ex  jxtrte 281 

Swan,  eximrte 32 

Swenson— Gritlin  r 72,  106 


T 

Tannage  Patent  Co.— Donallan  v 02 

Tannage  Patent  Co.  u.  Donallan 11,210,227 

Telfer,  ex  parte 46 

Thatcher  Mfg.  Co.  v.  Creamery  Package  Mfg.  Co 7o,  239 

Theisen,  f.x  j^arte o4 

Thomas  v.  Chapman   ....  147 

Thomas  Mfg.  Co.— Dennison  Mfg.  Co.  v 102.  274,  278,  299 

Thomas  Potter,  Sons  ^  Co.— Melvin  v 194,  213,  222 

Thomas  Roberts  Stevenson  Co.  I".  McFassell 84,191,221 

Thomson— Batcheller  t' 87,273,290 

Thomson  v.  Batcheller 87,  273,  290 

Thompsons.  X.  T.  Bushnell  Co 81,  100,  118,  231 

Thompson  V.  Second  Avenue  Traction  Co 88,106,117,227 

Thomson-Houston  Electric  Co.  v.  Athol  &  Orange  St.  Ry.  Co.  75,  239 

Thomson-Houston  Electric  Co.  v.  Bullock  Electric  Co 122 

Thomson-Houston    Electric  Co.  v.   Rahway  Electric    Light  & 

Power  Co 11,  247 

Tietgens  &  Robertson,  ficpar^e 283 

Tizley,  ex  parte 28 

Tower  I'.  Eagle  Pencil  Co 88,114,221,235 

Town  of  Windham- Chandler  Adjustable  Chair  &  Desk  Co.  v.   ■    242 

Tracy  v.  Leslie 72, 163 

Ti-aver  v.  Brown 72,  160 

Travers  Bros.  Co.— Covert  v 175,  240,  268 

Trent— Risdon  Iron  &  Locomotive  Wks.  v 112,  115,  200,  225 

21 


322  TABLE    OF   CASES. 

Tripp  Giant  Leveller  Co.  v.  Bresnahan 204,  225 

Triumph  Electric  Co.— Westinghouse  Electric  &  Mfg.  Co.  v.  83, 97, 251 

Tubular  Rivet  &  Stud  Co.  v.  O'Brien 112,115 

Tuttle,  ex  parte     41 

u 

Uebelacker  V.  Brill 130,131,132,150 

Ulrich— Smith  v 109,  113,  207,  229 

Union  Switch  &  Signal  Co.  v.  Phila.  &  R.  R.  Co 82,  241,  250 

Union  Writing  Mach.  Co.  v.  Domestic  Sewing  Mach.  Co.  .  .  212,  236 
United  Correspondence  Schools  Co.— Colliery  Engineer  Co.  v.  .  65,  66 
United  States  ex  rel.  Bernardin  v.  Duell,  Com.  of  Patents   .    .  176,  178 

United  States  Glass  Co.  v.  Atlas  Glass  Co 73,  116,  238 

United  States  Mitis  Co. — Carnegie  Steel  Co.  Lim.  v. 74 

United  States  Playing  Card  Co.  v.  Spalding 126,  222,  269 

United  States  Repair  &  Guaranty  Co.  v.  Assyrian  Asphalt  Co.  231, 248 
United  States  Repair  <fc  Guaranty  Co.  v.  Standard  Paving  Co.  .  80,  236 
Universal  Winding  Co.  v.  Willimantic  Linen  Co 77,  234.  215 


Vajen— Baderv 72,133,152,162,170 

Valiquet,  ex  parte 47 

Yan  Camp  Packing  Co.  v.  Cruikshanks  Bros.  Co 73,  294 

Yerniilya — Pennsylvania  Steel  Co.  i' 73,221 

Yon  Emperger  v.  City  of  Detroit 91 

Yon  Mumm  «.  Witteman .   .74,295 

w 

Waldo  V.  American  Soda  Fountain  Co 185 

Walker— Roschach  v 6,  161 

Walrath,  ex  parte 129 

Walsli  V.  Hallbauer  . 133,  150 

Waring,  ex  parte 29,  46 

Warner  v.  Gorton  v.  Smith 153 

Warner  Bros.  Co.— Warren  Peatherbone  Co.  r.    ...  94, 103,  240,  245 

Warren  v.  Casey 78,  88,  235,  244 

Warren  Featherbone  Co.  v.  Warner  Bros.  Co 94,  103,  240,  245 

Way  V.  McClarin 82,  189,  244,  249 

Weikly  v.  Hodges 149 

Weisner  e(  aL— Consolidated  Fastener  Co.  !^ 121,233 

Wellman,  ex  ^^ai'ie 17,46 

Welsbach  liight  Co.  v.  Apollo  Incandescent  Gas  Light  Co. 

90,  122,  219,  231 


TABLE    OF    CA8i:s.  323 

"Welsbacli  Light  Co.  r.  Xt'W  York  Clu'iiiical  lit'liiiiiig  Co 117 

Welsbju'li  I.ieht  Co.  r.  Kex  Incandescent  Light  Co.    .  92,  123,  12o,  229 

Western  Electric  Co.  i:  American  Rheostat  Co Id,  111,  223 

IVestern  Electric  Co.  v.  Citizens'  Telephone  Co !(2 

Western  Electric  Co.— Millheim  Electric  Tel.  Co,  '■ H).  204 

Western  Electric  Co.  ?'.  Western  Tel.  Const.  Co 7(1,239 

Western  Tel.  Const.  Co.— Western  Electric  Co.  r 70,239 

Westing-house  Electric  &  :Mfg.  Co.  r.  Beacon  Lamp  Co.  .  12,  193,  230 
Westingliouse    Electric  &  jMfg.  <'"o.  r.  Catskill    Ilhiminating  & 

Power  Co 229 

We.stinglion.se  Electric  &  Mfg.  Co.  v.  General  Electric  Co.  ...  Gl 
We.stinghonse  Air-Brake  Co.  r.  New  York  Air-Brake  Co.  .  .  S2,  237 
AVestinghonse  Electric  &  Mt'g.  Co.  r.  Triumph  Electric  Co. 

82,  97,  251 

Wheatfield— Bubens  v •  .   .  88,  246 

Whitaker  Cement  Co.  r.  Huntington  Dry  Pulverizer  Co.   .    .    .  s9,  236 

White— Edison  v 136 

Whitman  &  Barnes  Mfg.  Co.— Deeriug  Harvester  Co.  r.   .   .   .  To,  302 

Whitney  v.  Gair 224 

Whitney  v.  Gibson 154 

Whittaker  v.  Davis  et  al.  105 

Wilgus— Newton  Mfg.  Co.  V 221,253 

Wilkerson,  ex jxnie 87 

AVillcox  &  Gibbs  Sewing  Mch.  Co.  v.  Merrow  Mach.  Co.   .   .   .  93,  225 

Williames  !-.  McXeeley 9,60,90,101,232 

Williames— McXeeley  r 9,60,90,101,232 

Williams  r.  Ogle 72,  134 

Williams  r.  Perl 138 

AVillimantic  Linen  Co. — Universal  Winding  Co.  c 77,  234,  245 

AVilliam  Mann  Co.  v.  Hoffman 249 

AVilliam  Schollhorn  Co. — Bridgeport  Mfg.  Co.  v 75,  223 

Williams  v.  Ogle  ...  72 

Willian\son,  ex  pa?-ie 32 

Wilson  e<  aL  1-.  McCorniick  Harvesting  Mach.  Co 76,206,239 

Willson — BuUier  r ' 135 

Winslow  V.  Austin 72,  157,  170 

Witteman — Von  Mumm  '• 74,  295 

Wm.  Mumsen  &  Sons— Manitowoc  Pea-Packing  Co,  v 78,  297 

Wm,  Rogers  Mfg,  Co,  v.  Rogers 81 

Wood— Bechman  r 128,157,158,180,192 

Wood— Denipsey  v 130 

Woods— Essex  c 139 

Woodward  v.  Newton 132,  143 

Wordeii — California  Fig-Syrup  Co,  v 299 

Wright  and  Stebbins,  e.7;  jxn^e .    .      25 

AVright—Nat'l  Casii  Register  Co.  r 88,112,266 

W.  R.  Irby  Cigar  &  Tobiicco  Co.— Sarrazin  v 19,  78,  2.8,  293 


324  TABLE   OF   CASES. 

Wrisley  Co.  v.  Geo.  E.  Rouse  Soap  Co 287 

Woodbury — Johuston  v 249 

T 

Yacubian — Dadirrian  v 281 

Yale  &  Towue  Mfg.  Co.  v.  Sargent  &  Co 194,  251 


INDEX  TO  SUBJECT  MATTEE. 


A 

Abandoned  Applications 21-28 

Abandoned  Applications,  revival  of  2G 

Abandoned  experiments  12 

Abandoned  experiments,  priority 160 

Abandonment  by  one  of  two  joint  applicants 24 

Abandonment  of  Invention    1 

Abandonment  of  trade-mark 27-5 

Access  to  and  production  of  papers  in  interferences 129-131 

Accidental  infringements,  injunction  against 118 

Accidental  result  no  anticipation 11 

Acquiescence  in  Patent  Oflice  rejection 214,215 

Actions  other  than  rejection  47 

Actual  reduction  to  practice 163 

Aggregation 196 

Alternatives,  trade-mark 276 

Ambiguous  claims,  how  construed 213 

Amending  applications  in  interference 129-131 

Amendment  after  allowance 31 

Amendment  after  final  rejection 29,30 

Amendment  in  Patent  Office  claims  limited   214,  215 

Amendment  of  Api)lication    28-31 

Amendment  of  bill  in  e(iuity 270 

Affidavit  to  obtain  interference 28 

Amendment  to  Patent  Law  §  4896  4 

Amendments  to  rules  of  practice 26U 

Amendments  presented  to  save  from  abandonment  21,  22,  23,  24 

Analogous  use 198-200 

Answer  in  equity    103 

Anticipation 5 

Anticipation,  how  tested  5,  6,  7,  8 

Appeal 15 

Appeal  and  i)etition — designs !'5,  96 

Appeal  Fees,  return  of 18 

Appeal  to  Commissioner 15 

Ai)peal  to  the  Circuit  Court  of  Appeals 18 

Appeal  to  Examiners-iu-Chief 15 

Appeal,  limit  of   17,  18,  19 

(325) 


326  INDEX   TO   SUBJECT   MATTER. 

Appeals  dismissed  91-93 

Appeals  in  interference  cases 181-133 

Applications 19 

Applications  abandoned  21-28 

Applications,  access  to  pendin<^ 51 

Application,  amendment  of 2S-31 

Application  by  administrator  of  deceased  inventor 55,  56 

Application,  complete  36 

Application,  delay  in  filing 1,  2 

Applications,  division  of  36-41 

Applications,  drawings -11-44: 

Application,  examination  of 44-48 

Applications,  forfeited  48 

Applications,  joint  and  sole 56 

Applicants'  names 49 

Applications,  oatli 49 

Applications,  petition   51 

Api)lication,  public  use  proceedings^ 51,  52 

Applications,  re-issue 52 

Application,  specification 53,  54 

Application,  suspension  of  action  on  54,  55 

Arbitrary -descriptive  trade-mark 277 

Arbitrary  words,  trade-marks   276 

Arrangemen t,  patentabi lity    1 97 

A rt icle  of  m anuf ac ture 252 

Assignments 56,  57 

Assignment  of  trade-mark  278 

Attorneys,  disbarred 33 

Attorneys,  powers  of 31 

Attorn eys,  suits  266 

Attorneys,  use  of  assignment  records 33 

B 

Bar  to  maintenance  of  suit 268 

Bill,  amendment  of 270 

Bill  in  equity,  multifariousness 101,  102 

Blue-prints 43 

Burden  of  proof,  defenses 94 

Burden  of  proof  in  interferences 133,  134 

c 

Cases  distinguished    58 

Certificate  of  correction  of  patents  217,  218 

Cities  and  Corporations,  infringement  by 115,  116 

Claims,  ambiguous,  how  construed 218 

Claims,  duplicate  or  redundant 33,  34 


INDEX    TO   SUBJECT   MATTER.  327 

Claims  for  combination •2]:i 

Claims  for  conibiiiatious,  infringement 114 

Claims  for  specific  element  of  combination  lil.'!.  iil4 

Claims,  functional  and  indefinite ;>4.  35 

Claims  identical  in  scope IHO 

Claims  limited  by.amendmeut  in  Patent  Otlice  214.  :il5 

Claimb  limited  by  specification lilo 

Claims  limited  by  their  terms ijbj,  liio 

Claims  of  an  application 33,;:!4,  35 

Claims,  punctuation  of 35 

Claims  substantially  as  described I'Kl,  1'17 

Colorable  infringement   Ill,  113 

Combination,  patentability 1S8 

Comity 5H-(jO 

Commissioner  of  Patents,  jurisdiction  17(),  177 

Complete  applications  3G 

Composition  of  matter,  patentability 198 

Construction  of  contracts    61 

Construction  of  disclaimer  99,  100 

Construction  of  paten ts    205 

Construction  of  patents  by  state  of  the  art  212 

Construction  of  patents,  liberal  or  broad  208-210 

Construction  of  Statutes 265 

Construction  of  St  at  utes— designs    96-97 

Constructive  reduction  to  practice 105,  165 

Contracts,  construction  of  61 

Contracts,  spec i fie  performance    f il ,  62 

Contributory  infringement 11 -I.  115 

Copy righ t able  subject-matter 62 

Copyrights 62-68 

Copyrights,  false  marking  62 

Copyrights,  infringement  of  (Jo 

Copyrights,  penalties m 

Copyrights,  ])ublicati()M  and  sale  67 

Correction  of  i)ateuts  by  certificate 217,  218 

Coi-rection  of  i)atents  by  reissue  218,219 

Costs  of  suits 26() 

Court  of  Appeals,  I).  C  178,179,180 

D 

Damages  and  Profits 68 

Death  of  ajiplicant 25 

Deceased  inventor,  aiiplication  by  administrator  of 55,  56 

Deceptive  trade-marks 277 

Decisions  of  the  Commissioner  of  Patents  affirmed 71.  72 

Decisions  of  the  Commissioner  of  Patents  reversed  72 


328  INDEX    TO    SUBJECT    MATTER. 

Decisions  of  the  Commissioners  of  Patents,  affirmed  in  part  and 

reversed  in  part  72 

Decisions  of  Federal  Conrts,  affirmed 72-83 

Decisions  of  Federal  Courts,  reversed 83-91 

Decisions  of  Foreign  Courts 93 

Declaration  of  inteiference 135,  139 

Declaration  of  interference,  application  and  patent 136-137 

Dedication  to  the  public 3 

Defective  or  void  patents 204 

Defenses 94 

Delay  in  bringing  suit  267 

Delay  in  tiling  application 1,  2, 165 

Delay  in  filing  disclaimer 100 

Delay  in  filing  re-issue  application  220 

Demurrer  in  equity 103 

Descriptive  trade-mark 278 

Designs   95-99 

Designs,  appeal  and  petition  95,  96 

Designs,  infringement 97 

Designs,  interference , 98 

Designs,  limited  to  a  single  invention 97 

Designs,  test  of  identity  99 

Different  processes,  division ,. 40 

Diligence  in  reducing  to  practice 164-166 

Disbarred  attorneys   33 

Disclaimer   99-101 

Disclaimer  by  amendment  in  Patent  Ofhce 214,  215 

Disclaimer,  construction  of 99,  100 

Disclaimer,  delay  in  filing   100 

Disclaimer  under  the  statute,  E.  S.  H917 100 

Dispositions  of  motions  for  rehearing 93 

Dissolution  of  inj  unction 118 

Dissolution  of  interferences    139-146 

Dissolution  of  interference,  statutory  bars  145 

Dissolution  of  interference,  time  allowable  for  filing  motions  for.  145 

Dissolution,  transmittal  of  motion  for   '. 146 

Division  of  application 36-41 

Division,  classification  in  the  Patent  Office  36,37 

Division,  different  processes 40 

Di vi sion  practice 38 

Division,  process  and  apparatus 39,40 

■  Division,  process  and  product 40 

Division,  status  of  invention  in  the  arts  41 

Double  or  analogous  use 198,  199,  200 

Drawings   41-44 

Drawings  and  blue-prints 43 

Drawings  and  models,  as  reduction  to  practice  167 


INDEX    TO   SUBJECT    MATTER.  329 

Drawings,  construction  of  imtents  by 211 

Duplicate  or  redundant  claims  :v^,  34,  4o 

Duties  of  the  Commissioner  of  Patents 176, 177,  17S 

E 

Effect  of  Patent  Ottice  decision  in  the  courts  146 

Election  and  Division    29 

Employer  and  emjiloye,  priority 169 

Equitable  estoppel 215 

Equity 101-105 

Equity  answer 103 

Equity  l)ill 101 

Equity,  demurrer  103 

Equity  jurisdiction    103,  104 

Equity,  master's  report 104 

Equity,  plea 103 

Equity,  res  adjudicata  105 

Equivalents 105,  106 

Estimation  and  measure  of  damages  and  profits    68 

Estoppel 107,  108 

Estoppel  by  action  of  Patent  Oflice 215 

Estoppel  by  election  29 

Estoppel  by  failure  to  claim   4 

Esto]ipel  by  judgment  253 

Ei-sential  features  of  trade-mark 279 

Essentials  of  valid  trade-mark  274 

Evidence 109, 110 

Evidence,  admissibility  of  109 

Evidence  of  extensive  use  patentability 191,  192 

Evidence  of  result,  patentability 192 

Evidence,  weighing   109 

Examination  of  application  44-48 

Ex  parte  cases,  reopening  of,  in  the  Patent  Office 258 

Ex  pa rte  proceed ings  i n  interferences 1 47 

Experiments,  abandoned 12 

Experts,  testimony  of  271 

Extent  of  protection  by  patent 9 

F 

Failure  to  claim  invention 3,  4 

Ealse  marki ngs,  copyrigh ts 62,  63 

Eees 48 

Final  rejection,  amendment  after    29,  30 

Functional  and  indefinite  claims .34,  35 

Foreign  jiatents  and  publications   110 

Foreign  patents,  limitation  of  U.  S.  patents  by 219 


330  INDEX    TO    SUBJECT    MATTER. 

Foreign  patents,  priority  based  on 160 

Foreign  words  as  trade-marks 280 

Future  improvements,  assignment  of 57 

G 

Generic  terms  as  trade  marlvs    281 

Genus  and  species  interferences    138 

Geographical  names  indicating  locality  trade-marks    281 

Geographical  names  used  arbitrarily  as  trade-marks    283 

I 

Implied  license 184 

Information  and  advice  to  ai)plicants 44,  4"),  46 

Infringement    111-117 

Infringement  by  licensee 112 

Infringement,  claims  for  conil>iuatioiis    114 

Infringement,  contributory   114,  115 

I nf ri ngement ,  designs  97 

Infringement  of  copyright  63 

Infringement  of  process   116 

Infringement,  particular  cases 116,  117 

Infringement  of  trade-mark   274,  284 

Injunction  118-126 

Injunction  against  infringement  cf  co|)yright 65 

Injunction,  dissolution  of    118 

Injunction,  preliminary 110-123 

Injunction,  preliminary,  when  denied 121-123 

Injunction,  preliminary,  when  granted 120 

Inj unction,  prior  judgmen t 123 

Injunction,  public  acquiescence  a  ground  for 125 

Inj  unction ,  trade-marks  285 

Injunction,  violation  of 125,  126 

Insane  Persons,  Amendment  to  Patent  Law  in  regard  to 4 

Interferences 126-172 

Interferences,  access  to  and  production  of  papers  129-131 

Interferences,  amending  applications 129-131 

1  nter f erences,  appeals    131-133 

Interference  between  application  and  patent  136,  137 

Interferences,  burden  of  proof  133,  134 

Interferences,  claims  identical  in  scope 139 

Interferences,  declaration  of 135-139 

Interference,  designs 98 

Interferences,  dissolution 139-146 

Interferences,  dissolution  of,  statutory  bars 145, 146 

Interferences,  genus  and  species  138 

Interferences,  issues  147,  148 


INDEX    TO    SUBJECT    ^FATTKH.  331 

Interfences,  judji^int'iit  on  the  record   14!) 

Interferences,  practice  on  linal  hearins^-  and  alter  jndyuienl  ...  loO,  lol 

Interference,  priority lo(i-l(jii 

Interferences,  preliminary  statements 151-1  ")(3 

Interference,  rednction  to  practice  KJiI-KiT 

Interferences,  re-instatement  or  re-openini>- 107 

Interferences,  service  of  notices    ICT,  1(18 

Interferences,  snbjects-matter  mnst  conflict    l.'}7 

Interferences,  sngges'ing  claims KJT 

Interferences,  suspension  of  l(j,s,  Kit) 

Interferences,  testimony  lOO-lTl 

Interference,  trade-mark jsti 

Interferences,  vacating  judgment 171,  172 

Interfering  patent   172-174 

Intervening  rights 2,  220 

Invention,  abandonment  of  1 

Invention  and  skill  distinguished 1S;)-1!)1 

Invention  and  suggestion  distinguislied    191 

Invention,  failure  to  claim 3,  4 

In ven t ion ,  secret 2 

Irrelevant  testimony 171 

Issue  in  interference 147.  148 

J 

Joint  and  sole  inventors  56 

J udicial  notice 1 74 .  1 75 

Judgment  on  the  reccnxl  in  interferences  14!) 

Jurisdiction  17(i-181 

Jurisdiction,  Commissioner  of  Patents 176,  177 

Jurisdiction,  equity  lO;?,  104 

Jurisdiction  of  court,  trade-mark 287 

Jurisdiction  of  Federal  Courts 17S  181 

Jurisdiction,  Secretary  of  the  Interior  178 

L 

Labels 181 

Laches    1,  2,  3 

Laches,  suits 267 

Liberal  or  broad  construction  of  patents  208-210 

License  182-185 

License,  implied  1 84 

License  to  make,  use  and  sell 185 

Licensee,  infringement  V)y  112 

Limit  of  api)eal 17,  18,  1!) 

Limitation  of  U.  S.  patent  by  foreign  patent  219 


332  INDEX   TO   SUBJECT   MATTER. 

M 

Marking  articles  patented   1S6 

Master's  report 104 

Models    47,49 

Multifariousness  of  bill  inequity 101, 102 

Multiplicity  of  claims  33,  34 

isr 

Names  of  applicants 49 

New  application ■. 254 

New  matter 30,52 

New  or  renewed  oath    49 

New  use  or  adaptation 193 

Nominal  damages  71 

Notice,  judicial   1 74,  175 

Novelty  and  invention    193-196 

o 

Oath  in  application 49,  261 

Oatli  in  foreign  countries 50 

Oath,  supplemental    50 

Operativeness  and  utility 7 

P 

Particular  cases  of  infringement 116,  117 

Parties  to  a  suit   268 

Patentability    187-202 

Patentability,  aggregation 196 

Patentability,  arrangement 197 

Patentability,  combination 188 

Patentability,  composition  of  matter 198 

Patentability,  double  or  analogous  use 198-200 

Patentability,  evidence  of  extensive  use  191, 192 

Patentability,  evidence  of  result  192 

Patentability,  invention  and  skill  distinguished 189-191 

Patentability,  invention  and  suggestion  distinguished    191 

Patentability,  new  use  or  adaptation 193 

Patentability,  substitution  of  materials  195, 196,  200,  201 

Patentability,  utility 192,193 

Patent  Laws,  Amendment  to 4 

Patents  '. 202 

Patents,  ambiguous  claims,  how  construed 213 

Patents  and  printed  publications -•-      5 

Patents  and  publications,  foreign 110 

Patents,  construction  of  205 


INDEX    TO   SUBJECT   MATTER.  333 

Patents,  constiuction  of  by  drawings 211 

Patents,  construction  of  by  specilication 211,  212 

Patents,  construction  of  by  state  of  the  art 212 

Patents,  construction  of,  liberal  or  broad 20S-210 

Patents,  claims,  substantially  as  described 210,  217 

Patents,  claims,  limited  by  their  terms 21o,  216 

Patents,  claims  limited  by  amendment  in  Patent  Office 214,  215 

Patents,  claims  for  specific  element  of  combination 213,  214 

Patents,  claims  for  combination  213 

Patents,  correction  of  by  certificate    217,  218 

Patents,  correction  of  by  reissue 218,  219 

Patents,  defective  or  void    204 

Patented  machines,  repair  of 2(30 

Patents,  inierf er ing    1 72-1 74 

Patents,  limitation  of  by  foreign  patents  219 

Patents,  presumption  of  validity 203,  204 

Patents,  reissue  220 

Patents  to  different  inventors,  interfering   174 

Patents  to  same  inventor,  interfering 172-174 

Patents,  valid  and  infringed  220-233 

238,940.     Mar.  15,  1881.     Low    232 

248,990.    Nov.  1,1881.    Brahm 221 

250,700.     Dec.  31,1881.    Anderson 223 

251,630.    Dec.  27,  1881.     Palmer  230 

254,093.     Feb.  21,1882.     Janney    225 

256,089.     Apr.  4,  1882.     Williames   232 

256,619.     Apr.  19,  1882.     Barley    225 

265,619.     Apr.  19,  1882.     Barley    230 

277,134.     May  8.  1883.     Huntington    223 

281,767.    July  24, 1883.    Jensen 227 

291.784.  Jan.  8,1884.     Schultz 227 

291.785.  Jan.  8,  1884.     Schultz 227 

293,740.     Feb.  14,  1884.     Hyatt 223,227 

297,671.     Apr.  29,  1884.     Chambers 226 

301,908.     July  15,  1884.     Marqua  232 

308,981.     Dec.  9, 1884.     Palmer 226 

309,727.     Dec.  23, 1884.     Morrin    220 

310,276.    Jan.  6,  1885.     Hayes   221 

310,966.     .Jan.  20,  1885.     Thompson 227 

314,204.     Mar.  17,1885.     Sw^ett 231 

317,622.     May  12,  1885.     Buzzell    232 

317,663,     May  12,  1885.     Mielile    230 

318.859.  May  26,  1885.  Bowers   222 

318.860.  May  26,  1885.  Bowers  222 

319,754.  June  9,  1885.  Simonds 220,227 

322,393.  July  14,  1885.  Fotis  et  al 232 

323,372.  July  28,  1885.  Stanley    230 


334  INDEX    TO    SUBJECT    MATTER. 

Patents,  valid  and  intringed  — Continued. 

324.892.  Aug.  25,  1885.     Spiague    224 

828,019.     Oct.  18,  1885.     Fowler   231 

841,214.     May  14,  1880.     Bell  &  Tainter 222 

350,727.     Oct.  12,  188G.     Elliott 224 

352,809.     Nov.  10,  1880.     Hoclistedt  et  al 223,  230 

3o4,(iG0.    Dec.  7,  188().     Hockstedt  223,  230 

354,499.     Dec.  14,  1880.     AVoodwaid    227 

354,935.     Dec.  28,  1880.     Eettig 229 

354,954.     Dec.  28,  1880.     liittig 228 

872,000.     Oct.  25.  1887.     Corser 220 

872,950.    Nov.  8,  1887.     Bowers    222 

377,151.    Jan.  31,1888.     Grosseliii  224 

878,223.     Feb.  21,  1888.     Tower    221 

378,934.     Mar.  0,1888.     McNutt  223 

388,258.     May  22,  1888.     Sutton 230 

388,918.     June  5,  1888.     Rood  ei  oZ 225 

384.893.  June  19,  1888.     Cutcheon  225 

380,121.    July7.  1888.     Gauthier 221 

893,323.     Dec.  4, 1888.     Condict 222 

397,290.     Feb.  5,1889.     King 221 

398,158.     Feb.  19, 1889.     Jettery 220 

417,908.     July  30,  1889.     liawson,  fi  cd  229,231 

312,155.     Oct.  1,1889.     Anderson 232 

412,279.     Oct.  8,  1889.     Melvin  222 

419,292.     Jan.  14,  1890.     Simonds 220.227 

427,220.    May  0,1890.     Bernard   223 

428,123.     May  20, 1890.    Morrison 283 

448,734.     Dec.  30,  1890.     Wilgus   221 

Ee.  11,107.    May  20, 1891.    Beach   224 

(Original  447,225.     Feb.  14,  1891.) 

452.894.  May  20,  1891.    Bundy 228 

455,993.     July  11,  1891.     Barrett 228,  232 

403,307.     Nov.  17,1891.     Morrin  220 

403,808.    Nov.  17,  1891.    Morrin  220 

472,094.    Apr.  5,  1892.     Wilcox,  eJ  «^  220 

490.105.     Jan.  17,  1893.     Disbrow,  et  al 228 

492,987.     Mar.  7,1893.     McEwan 224 

Be.  11,324.     Apr.  18,  1898.     Earl  225 

(Original  405,015,    Dec.  22, 1891.) 

Be  11,395.    Dec.  12,  1893.     Hart   225 

(Original  459,700.     1891.) 

513.307.     Jan.  23,  1894.     Crissen    220 

522,435.     July  8,  1894.     Smith    229 

524,254.     Aug.  7,  1894.     Julius  -28 

524,502.     Aug.  14,  1894.    Moore 226 

525,941.     Sept.  11,  1894.     Bisler .« 222 


INDKX    TO   SUBJECT    MATTKH.  335 

Patents,  valid  and  infrinjied— Coiittjutcd. 

527.102.     Oct.  !»,  1894.     Barrett 228 

538,884.     jSIay  7,  1895.     Scliierliolz  225 

540,80(1.    June  11,  1895.     Family 231 

543,884.     July  30,  1895.     La  Due 228 

554.675.     Feb.  18,  1890.     Grant 224 

500.599.     May  19,  189(!.     Perkins  2:^1 

505,807.     Aug.  11,  189().     AVarner 223 

27,272.    June  29,  1897.     Hill  (design)    222 

Patents,  valid  but  not  infringed    233-237 

230.409.     July  27,  1880.     Eutebrouk    233 

247.388.     Sept.  20,  1881.     Gillelt    234 

200,402.     July  4,  1882.     Dodge  ci  «? 235 

277.134.     May  8,  1883.    Huntington 236 

281,508.     June  17,  1883.     Hipperling  234 

298,879.     May  20,  1884.     Munro    233 

305,882.     Sept.  20,1884.     Bauer 235 

322.194.     July  14,  1885.     Mieliaelis  234 

322,309.     June  14,  1885.     Mielile    237 

325,430.     Sept.  1,1885.     Mead    233 

347,442.    Aug.  17,  1886.     Eauli 236 

362,204.     March  3,  1887.    Chambers 234 

364,101.     May  31,  1887.     Cnshman  236 

376,400.     Jan.  10,1888.     Stokes 237 

378,223.     Feb.  21,1888.     Tower 235 

382,032.    May  1,1888.     Dixon    237 

383,999.    June  5,  1888.     Stokes 237 

397,254.     Feb.  5,  1889.     Stokes  237 

399,807.     March  19,  1899.     Gail 235 

403,143.     May  14,  1889.     Ryan  235 

408,300.     Aug.  0.1889.     Ewig    235 

432,115.     July  15,1890.     Brill 233 

454,845.     June  SO,  1891.    Brooks  236 

465,407.     Dec.  15,  1891.     Green 234 

465,432.     Dec.  15,  1891.     Green 234 

480,157.     Apr.  2,  1892.     Wardwell    234 

501,537.     July  18,  1893.     Perkins  236 

538,001.     Apr.  23,  1895.     Westinghouse,  ,Jr  237 

570.259.  Oct.  27,  1896.     McColl    237 

570.260.  Oct.  27,  1896.     McColl    237 

589,670.     Sept.  7,  1897.     Warren    235 

Patents,  validity  not  determined;  not  infringed 237-242 

215,837.     May  27,  1879.     Roosevelt  239 

227,102..   May  4,  1880.    Gassttt  ei  aZ    241 

233,035.     Oct.  5, 1880.     Smith 239 

233,746.     Oct.  26,  1880.     Gassett   241 

246.492.     Aug.  30,  1881.     Gii^sett  241 


336  INDEX    TO   SUBJECT    IMATTEK. 

Patents,  validity  not  determined;  not  mfriuged— Continued. 

200,819.  July  11,  1882.     Arbogast  238 

267.214.  i^ov.  7,1882.    Norton 238 

271,510.  Jan.  30,  1883.     Palmer   239 

273,377.  Mar.  G,  1883.     Means 241 

274,363.  Mar.  20,  1883.     Xorbon  ct  al 238 

290,697.  Dec.  2.5,  1883.     McTammany  238 

294,06-5.  Peb.  26,  1884.    [Norton  ct  al 238 

319.215.  June  2,  1885.     Fay   240 

322,060.  July  14, 1885.    Jordan 238 

327,626.  Oct.  6,  1885.     Warren 240 

364,161.  May  31,  1887.     Cusliman   ,238 

365,240.  June  21,  1887.     Coburn 242 

371,839.  Oct.  25,  1887.     Hebbard 241 

395,668.  Jan.  1,1889.     Smith 240 

404,414.  June  4,  1889.    Jones    241 

411,368.  Sept.  17,  1889.     Barnhart  239 

412,296.  Oct.  8,  1889.     Richardson 240 

439,920.  Nov.  4,  1890.     Williams  c«  a/ 240 

447.179.  Feb.  24,  1891.     Hawley  240 

448,60.  Mar.  17,  1891.     Rice    239 

474,997.  May  17.  1892.    Palmer    238 

491,012.  Jan.  31,1893.    Ericson  240 

508,5.57.  Nov.  14,  1893.     Roulstone 241 

604,.338.  May  17,  1898.     Rickard  c«  aZ 241 

606,435.  June  28,  1898.    Williams  241 

30,147.  Feb.  7,  1899.     Williams  (design)    241 

Patents,  void  in  whole  or  in  part 242 

173,261.  Feb.  8,  1876.    Bragg  244 

199,082.  Jan.  8,  1878.     McBride  251 

207,343.  Aug.  27,  1878.     Chambers 245 

208,157.  Sept.  18,  1878.    Covert  249 

267,032.  Nov.  7,  1882.     Sperry 250 

270,867.  Jan.  16,  1883.     Westinghouse 250 

272,311.  Feb.  13,  1883.     Palmer  246 

275,467.  Apr.  10,  1883.     Chamber!^ 245 

284,036.  Aug.  28,  1883.     McBride   251 

295.180.  May  18,  1884.     Lawrence 248 

297,675.  Aug.  29,  1884.    Chambers 245 

303,393.  Apr.  12,  1884.     Maier 247 

304,172.  Aug.  26,  1884.     Chatillon 249 

315,672.  Apr.  14,  1885.     Smith 246 

338,506.  Mar.  23,  1886.     Gaitley  245 

17,235,  Apr.  5,  1887.     Sagendorph  (design)  247 

362,938.  May  17,  1887.     Cogswell    243 

364,219.  June  7,  1887.     Corser 246 

364,603.  June  7,  1887.     Rulifson 247 


INDEX    TO   SUBJKCT    .MATTER.  337 

Patents,  void  in  wlioU^  or  in  iKirt — Contiiiucd. 

;U)r),24(i.  ,Inne  L'l,  1S87.    Cobuin i^ii 

;M),(i:Jl.  July  12,  1^87.     Coiner 24(i 

31)8,898.  Aug.  28,  1887.     Potts,  c(  a^   -"'0 

373.107.  Nov.  lo,  1887.    Taylor  liol 

380.108.  Aug.  9,  1888.     Parsons  215 

380,993.  Sept.  2o,  1888.     AVarren -1") 

390,087.  Sept.  2-3,  1888.     Loewenbacli    -4o 

399.029.  Mar.  o,  1889.     Fry    -'4'-^ 

408,300.  Mar.  9, 1890.     Ewig -!0 

408,930.  Aug.  13,  188!).     Stokes    -48 

Pve.  11.079.     May  27,  1890.     ITcdbaviiy    -^" 

(Original  408,879.) 

429.030.  June  30,  1890.    Jackson  e^fi   ii4o 

432.115.  July  15,1890.     Brill -42 

437,901.  Oct.  7, 1890.     Baker -47 

447,179.  Feb.  24,  1891.     llawley  249 

450,124.  Apr.  7,  1891.     Hoffman 251 

450,202.  Apr.  30,  1891.     Orr 248 

21,410.  Mar.  22,  1892.     Sclnnid  (design) 250 

480.158.  Aug.  2,  1892.     Wardwell  245 

482,484.  Sept.  13,  1892.     Lettelier   244 

480,745.  Nov.  2,  1892.     Wardwell   245 

490,849.  Jan.  31,  1893.    Johnston    249 

492,811.  Mar.  7,  1893.     Kisinger 2".l 

493,220.  March  7,  1893.     Palmer -43 

496,058.  Ain-.  25,  189;^.     Lohbiller  -1~ 

501,537.  July  18,  1893.     Perkins 248 

500,430.  Oct.  10,  1893.     McKee  et  a? 242 

511,923.  Jan.  2,  1894.     Barrett 250 

532,444.  eJan.  15,  1895.     Christy   240 

Re.  11,478.    Mar.  12, 1895.     Stieringer  244. 

(Original  Xo.  259,235.    June  6,  1882.) 

539,234.  May  14,  1895.     IIuss    243 

543,072.  July  23,  1895.     Wohlfarth 240 

545,040.  Aug.  20,  1895.     Falk    243 

540,360.  Sept.  17,  1895.     Stevens  e(  aZ 250 

547,185.  Oct.  1,1895.     Sclirei    244 

547,732.  Oct.  8,  1895.    Marble  242 

549,370.  Nov.  5,  1895.     Kenney 243,  251 

549,375.  Nov.  5,  1895.     Lettelier 244 

555,434.  Feb.  25,  1890.     Davey 249 

558,218.  Apr.  14,  1890.     Shoe    248 

573,789.  Dec.  22,  1890.     Lyons 247 

581,123.  Apr.  20,  1897.     Leslie 248 

589,070.  Sept.  7,  1897.     Warren    244 

593,954.  Nov.  10,1897.     Way 244,249 

22 


338  INDEX    TO   SUBJECT    MATTER. 

Patents,  void  in  whole  or  in  part — Continued. 

2S,U2.     Jan.  ll,lS!kS.    Cary  (design)   242 

Petition  in  api)liration  51 

Plea  in  equity  103 

Postotlice  address  of  applicants 51 

Poveity  and  sicliness,  as  excuses  for  delay 165,  1G6 

Powers  of  attorney   HI 

Practice,  division  38 

Practice  in  the  Patent  Otiiie,  Irade-niark 288 

Practice  in  the  U.  ».  Courts  251 

Prai-tice  on  final  hearing  and  after  judgment,  interferences  ...150,  151 

Preliminary  injunction  119-123 

Preliminary  injunction,  essentials  to  niaiitaiu  119 

Preliminary  injunction,  when  denied   121-123 

Preliminary  injunction,  when  granted  120 

Preliminary  statements,  auiendment  of  152-156 

Preliminary  statements,  interferences 151-156 

Prt  sumption  of  operativeness  and  utility 7 

Presumiition  of  validity 203,  204 

Printed  publications  ,. 5 

Prints  252 

Prints  and  labels,  order  in  relation  lo 253 

Prior  adjudication 253-255 

Prior  adjudication  of  patent 121,  123 

Prior  art ' 9,  10,  11,  12 

Priority  (jf  invention 156-162 

Prioiily  of  invention  as  affected  by  foifeiture  of  application Ill 

Priority,  abandoned  experiments 160 

Priority,  generic  and  specific  inventions  158 

Priority,  invention  made  by  tliird  party 161 

Prior  judgment 123 

Process  and  apparatus,  division  39,40 

Process  and  product,  divisicm  40 

Processes,  differe)it,  division 40 

Process  or  method,  patentability  194,  195,  200 

Process,  infringement  of 116 

Products,  patentability 195 

Professional  secrets 266 

Protection  of  patents  in  territory  subject  to  military  government 

by  U.  S.  forces ■ -55 

Public  acquiescence,  injiuictiun    125 

Public  use  or  sale  13,14,15 

Public  use  proceedings.. 30,  51,  52 

Punctuation  of  claims  35 


INDEX    TO   SUBJECT    MATTEK.  339 

Q 

Questions  leviewablf  on  Mppeal  to  Boaid lo,  10 

Questions  reviewable  on  appeal  to  a  Ciicuit  Court  of  Ai)iieals 19 

Questions  reviewable  on  petition 15 

R 

Reduction  to  piaclice Kiil-KiT 

Reduction  to  juactice,  actual 1('>2,  1G3 

Reduction  to  practice,  constructive 163 

Reduction  to  practice,  dilifjcence    1(14-166 

Reduction  to  practice,  drawings  and  models   167 

Registration  of  trade-mark 289 

Reinstatement  or  re-opening  interfcrei;c;'s  167 

Re-issue  applications 52 

Re-issue,  correction  of  by  re-issue 21S.  219 

Re-issue  patents 220 

Rejection    4(),  47 

Renewal  of  forfeited  applications 48 

Re-opening  cases  in  the  Patent  Oflice  21,258 

Re-opening  of  interference  cases  259 

Repair  of  patented  machines 260 

Bes  adjiulimta 105,  258-255 

Revenue  Stamps 263 

Revised  Statutes,  §^  649  and  TOO   19 

Revised  statutes,  i  914 266 

Revised  Statutes,  Mf'So  6 

Revised  Statutes,  ^  4886 .'!,  18 

Revised  Statutes,  ?  4887 86,219 

Revised  Statutes,  {J  4888 86,  208 

Revised  Statutes,  ?  4889  86 

Revised  Statutes,  ?  4892  86 

Revised  Statutes,  M898  3 

Revised  Statutes,  ?  4896   86 

Re\ised  Statutes,  ?  4900   186 

Revised  Statutes,  'i  4916  218.  219 

Revised  Statutes,  M917   100 

Revised  Statutes,  ?  4918   174 

Revised  Statutes,  ?  4920  6 

Revised  Statutes,  ?  4928  18,  14 

Revised  Statutes,  ?  4929 96.  97 

Revised  Statutes.  ^^  4952   64 

Revised  Statutes,  §  4956   67 

Revised  Statutes,  ?  4962   63 

Revised  Statutes,  g  4968  62,  63 

Revised  Statutes,  'i  4965  67 


340  INDEX    TO   SUBJI-:CT    MATTER. 

Revised  Statutes,  2  4970   64 

Revival  of  abandoned  applications 26,  27 

Riglit  to  use  name  of  patented  article  as  trade-mark   290 

Right  to  nse  personal  name  as  trade-mark   291 

Rule  1) 261 

Rule  10    49 

Rule  26   182 

Rule  32   49 

RuCSa    51 

Kill  ■  41     38.  40,  261 

Rule  42    38 

Rule  47 261,262 

Rule  49    42 

Rule  (16    21 

Ride'iS 23,  30 

Rule  70    30 

Rule  75    15 

Rule  78    31 

Rule  92    47 

Rule  94 28 

Rule  96    28 

Rule  105 129 

Rule  106  51,  !29 

Rule  107 51 

Rule  108 129 

Rule  109 51,  129,  130,  132,  149 

Rule  122  142,  243-145,  148,  179,  180 

Rule  124  132,  141,  142,  177,  179 

Rule  126    168,  169,  177,  179 

liule  127 146,  151 

RUV129 149 

Rule  130 51 

Rule  139 258 

Rule  142 258 

Rule  170 43 

Rnli-  172    23,  26,  27,  28 

Rules  of  Practice,  amendments  to   260-263 

S 

"  Same  invention."  rule  127    151 

Second  application 254 

Secretary  of  the  Interior,  jurisdiction 178 

Secret  invention    2,164,165 

Secret  use  no  anticipation 12 

Service  of  notice  in  interferences 167,  168 

Specification,  construction  of  patents  by  211,  212 


INDEX    TO   SUBJECT   MATTER.  341 

Specification,  sufliciency  of    o3,  54 

Specific  element  of  combination,  claims  for 213,  214 

State  of  the  art,  construction  of  patents  by 212 

Status  of  invention  in  the  arts,  division    41 

Statutes,  construction  of 265 

Statute  construed,  trade-mark  292 

Subsequent  applications 48 

"Substantially  as  described,"  etc 105,  21f),  217 

Substitution  of  materials 195,  196,  200,  201 

Suggesting  claims  151 

Suggesting  claims  for  interference' 137 

Suits,  attorneys  266 

Suits,  costs    266 

Suits,  laches 267 

Suits,  parties 268 

Suits,  title 271 

Suppleirental  oath 50 

Suppression  of  evidence  on  motion 109 

Suspension  of  action  on  application    54,  55 

Suspension  of  interferences 168,  169 

T 

Testimony  in  interferences 169-171 

Testimony,  irrelevant  171,  267 

Testimony  of  interested  parties 170 

Testimony  of  experts 271 

Test  of  identity,  designs 99 

Test  of  trademark  infringement 296 

Time  allowable  for  filing  motions  for  dissolution  145 

Times  for  taking  testimony 170 

Title  suits 217 

Trade-mark,  abandonment  of 275 

Trade-mark  alternatives 276 

Trade-marks  and  Trade-names 272 

Trademarks  and  trade-names,  unfair  competition 294 

Trade-mark,  anticipation 276 

Trade-mark ,  arb i trary  276 

Trade-mark,  arbitrary  descriptive  277 

Trade-maik  assign ment   • 278 

Trade-mark,  deceptive 277 

Trade-mark,  descrii)tive  278 

Trade-mark,  essential  features 279 

Trade-mark,  foreign  words 280 

Trade-mark,  function  of 274 

Trade-marks,  generic  terms   281 

Trade-mark,  geographical  names 281 


342  INDEX    TO    SUBJECT    MATTER. 

Trade-marks,  geographical  names  used  arbitrarily   283 

Trade-mark,  infringement 284 

Trade-mark,  injunction    285 

Trade-mark,  interference 286 

Trade-mark,  jurisdiction  of  couit 287 

Trade-mark,  practice  in  the  Patent  Ollice    288 

Trade-mark,  registration 289 

Trade-mai-k,  right  to  use  name  of  patented  article   ."T 290 

Trade-mark,  right  to  use  personal  name    291 

Trade-mark  statute  construed  292 

Trade-:nark,  test  of  infringement  " 296 

Trade-mark,  use  and  sale  as  establishing  title    301 

Trade-mark,  what  does  not  constitute 301 

Trade-marks  and  Trade-names,  words  and  names. 

'•  American  Beauty  "    276 

"  American  Volunteer  " 287 

"  Apple  and  Honey" 278 

"Bowdoin" 281 

"Bromo-Soda-mint"' 278 

"Buffalo-Pitts" 283 

"Castoria" 290,  295,296 

"Chill  stop"    279 

"Continental" 281 

"  j)yspepticide  " •  276 

"Elgin   '    282,288 

"Ever-ready" .-  280 

"Extra  Dry  "  295 

"  Featherslone  " 291 

"Franck'sRed  Roll  Chicory  " 300 

"Gibraltar" 283 

"Gold  label"  280 

"  Guenther's  Best "  291 

"Hansa"  283 

"Swanta" 284 

"Matzoon"  (or  "Madzoon")    281 

"Nickel  Soap"    279 

"Otaka"    276 

"Rose  de  France  " 285 

"  Royal  Blue  " '..  276 

"  Schultz's  Vichy  Water  "  298 

"Standard" 280 

"  Standard  Distilling  Co." 300 

"  Stuart's  Dyspepsia  Tablets  "  297 

"  Uneeda"    276,  284 

"Vichy"   282 

"Volunteer"  287 

"Waltham" 301 


INDEX    TO   SUBJECT   MATTER.  343 

Two  iiiveiitioiis  in  ono  claim 80 

u 

Use  and  sale  as  establishing  title  in  trade-mark 301 

Use  of  assignment  records  by  attorneys o3 

Utility    1!)2,  \m 

Y 

Vacating  judgments,  interferences 171,  172 

Verdict,  evidence  insudicient  to  support  :>12 

Violation  of  injunction    12o,  V2Cy 

w 

Weighing  evidence 110 

What  does  not  constitute  a  trade-mark 3U1 

Writ  of  error 2o2 


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